KENSHOO, LTD.

Patent Trials and Appeals Board

Nov 20, 2020

2020003373 (P.T.A.B. Nov. 20, 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.
13/633,923 10/03/2012 EREZ SHASHA 07696-P0006A 7376
136531 7590 11/20/2020
The Roy Gross Law Firm, LLC
50 Washington Street
Suite 737/745
Norwalk, CT 06854
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
11/20/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EREZ SHASHA, TAL HASHAI, and NIR COHEN
____________________

Appeal 2020-003373
Application 13/633,923
Technology Center 3600
____________________

Before JOHN A. EVANS, JUSTIN BUSCH, and JOHN P. PINKERTON,
Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which are all of the claims pending in the
application. 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 KENSHOO
LTD. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s described and claimed invention relates generally to
facilitating the provisioning of location-based advertising for a roving
service provider. Spec. 1:17–22.2
Claims 1, 11, and 20 are independent. Claim 1 is representative of the
subject matter on appeal and is reproduced below (with paragraph notations
added):
1. A method for facilitating the provision of Internet
advertising, the method comprising the following automatic
steps:
(a) receiving, at a server, a notification indicating a
provider geographical location of a roving provider of a service,
wherein the notification is provided by a GPS (Global
Positioning System)-capable device of the roving provider of
service;
(b) at the server, updating data associated with the roving
provider based on the provider geographical location, wherein
the data includes one or more provider keywords associated with
the roving provider and with the service provided by the roving
provider;
(c) sending the provider geographical location and the
associated data from the server to a computer-based search
engine that is configured to provide search results in conjunction
with advertisements;

2 Our Decision refers to the Final Office Action mailed May 18, 2017
(“Final Act.”), Appellant’s Appeal Brief filed March 13, 2018 (“Appeal
Br.”), the Examiner’s Answer mailed April 19, 2018 (“Ans.”), and the
original Specification filed Oct. 3, 2012 (“Spec.”).

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(d) at the computer-based search engine, receiving a query
initiated by a user and associated with any one of the provider
keywords;
(e) at the server, receiving a user geographical location of
a computer of the user;
(f) at the server, matching the user geographical location
with the provider geographical location, within a predefined
match tolerance;
(g) providing to the computer-based search engine, by the
server, and based on the matching, an advertisement that is
associated with the roving provider, with the query, and with the
user geographical location;
(h) providing to the user, by the computer-based search
engine, the advertisement and search results that are associated
with the query; and
(i) displaying the advertisement and search results that are
associated with the query using the computer of the user.
Appeal Br. 21 (Claims App.).

Rejections on Appeal
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Final Act. 2–4.
Claims 1, 3–11, and 13–20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Bruecken (US 2008/0154706 A1; June 26,
2008) and Wang et al. (US 2008/0052413 A1; Feb. 28, 2008) (Wang). Id. at
4–10.
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Claims 2 and 12 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bruecken, Wang, and Hoffman (US 8,639,629 B1; Jan.
28, 2014).3 Id. at 10.
ANALYSIS
I. SECTION 101 REJECTION
A. Examiner’s Findings and Determinations, and Appellant’s Arguments
The Examiner determines that claims 1–20 recite the abstract idea of
“providing location based advertising for roving service providers” within
the mental processes grouping. Final Act. 2–3; Ans. 3–4. According to the
Examiner, the claims recite an abstract concept related to the court-identified
abstract ideas of “collecting information, analyzing it, and displaying certain
results of the collection and analysis,” and “using information known about
a user to target communications, such as providing an advertisement to a
user based on known demographics of a user.” Final Act. 2–3 (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266,
1271 (Fed. Cir. 2016)); see also Ans. 3–8.
In addition to reciting an abstract idea, the Examiner makes the
following determinations about the claims. First, “[t]he claims do not

3 The Final Office Action states that “[c]laims 2 and 12 are rejected under
pre-AIA 35 U.S.C. [§] 103(a) as being unpatentable over Bruecken . . . in
view of Della Pasqua . . . and in further view of Hoffman.” Final Act. 10.
The body of the rejection, however, does not cite or otherwise mention
Della Pasqua, but instead relies only on Bruecken, Wang, and Hoffman. See
Final Act. 10. Accordingly, we consider claims 2 and 12 to stand rejected
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bruecken, Wang,
and Hoffman. We treat this irregularity in the record to be a clerical or
typographical error.

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include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements when
considered both individually and as a combination do not amount to
significantly more than the abstract idea.” Final Act. 3. Second, “[t]he
claims recite the additional elements of a server, GPS device, computer
(hosting the search engine), user computer, data storage device, and non-
transitory computer readable storage medium” which “are recited at a high
level of generality and only perform generic functions of transmitting and
receiving data in the receiving, sending, providing, and displaying steps and
automating mental tasks in the updating and matching steps.” Id. at 3–4.
Third, “the combination of elements does not provide any improvement to a
computer or to another technology.” Id. at 4. Rather, the Examiner
determines that “the current claims do not focus on an improvement to
computers as tools but on abstract ideas that use computers as tools.” Ans.
4; see also id. at 7. Fourth, “Applicant’s claimed invention is performing the
claimed concepts precisely as a human would perform them without a
computer, except the claimed invention is applying these concepts to a
computer environment. . . . using generic computers and performing the
steps using generic computer functions” without “any special or particular
way the computer is performing these steps or utilizing a special or unique
technology or technique to do so.” Final Act. 12. Fifth, “[t]he ability to
advertise for roving service providers is not internet centric, rather applicant
has chosen to provide advertising in a particular technological environment,”
so “none of the technology used in the claims constitutes ‘significantly
more.’” Id. at 11. The Examiner finds that “Appellant has not articulated a
problem or technical solution in their specification or claims that is unique to
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roving service providers on the internet but does not apply to roving service
providers outside of the internet.” Ans. 8. Sixth, “[t]he dependent claims do
not add significantly more as they also perform generic computing activity
such as transmitting and receiving data over a network, receiving,
processing, and storing data, and automating mental tasks.” Final Act. 4.
Appellant contends the Examiner erred by rejecting claims 1–20
under 35 U.S.C. § 101 because (1) the Examiner incorrectly analogized
claims 1–20 to claims deemed patent-ineligible by the courts, including the
claims in Electric Power Group and Affinity Labs (Appeal Br. 8–10); (2) the
Examiner erroneously compared the claims to the concept of food or ice
cream truck advertising without providing a detailed analysis showing
similarity—which there is not—of each claim feature to that concept (id. at
10–11); and (3) Appellant’s claims are comparable to claims deemed
patent-eligible by the courts (id. at 11–13).
In support of its contentions, Appellant makes the following
assertions. First, “the claims are directed to a specific technical solution for
overcoming technical interfacing problems between roving providers and
search engines that provide advertisements to users, and are not directed to
an abstract idea.” Appeal Br. 9. Second, “the additional element of a server,
separate to the search engine, that converts in a non-conventional manner the
geographical location of the roving provider to bid parameters that are
interfaced to the API of the search engine is significantly more than any
potential abstract idea.” Id. at 9–10 (emphasis omitted). Third, “[a]s in
DDR,[4] the claims recite technical elements that are rooted in computer

4 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014).
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technology and solve the technical problem of converting an advertiser’s
roving location (such as a GPS sensor measurement) to bid parameters that
are interfaced with an advertising platform the advertiser wishes.” Id. at 11.5
Fourth, “the nonconventional functionality of the converting server allows
automatic conversion of the roving provider’s geographical locations to
keywords and bid parameters that are acceptable by the advertising platform
for stationary providers, thus allowing the roving provider to mimic the
advertising of a stationary provider.” Id. at 11–12. Fifth, “[a]s in Enfish,[6]
the claims recite technical elements that provide improvement to computer
functionality using a dedicated server for the conversion and interfacing,
thus allowing a roving provider to advertise based on their location using an
internet advertisement platform” Id. at 11. And sixth, “[t]he claims recite
steps that are highly-specific to how the computer technology problem is
solved, in an interplay between a service provider’s GPS-capable device, a
user’s computer, a computer-based search engine, and a server that
orchestrates the majority of the actions.” Id. at 13.7

5 See also Appeal Br. 12–13 (“[T]he internet-specific advertising technique
recited in the claims ‘is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks’ – the problem of advertising dynamically-located service
providers to users located nearby, over a computer network.”).
6 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336–37 (Fed. Cir. 2016).
7 See also Appeal Br. 13 (“[T]he Examiner completely disregarded the
additional element of a dedicated server that converts the geographical
location of the roving provider to advertising platform bid parameters, and
automatically in real-time updates the bid parameters on the advertising
platform.”).
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B. Applicable Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Com’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Id. at 217. If so, we then examine “the
elements of [the] 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.” Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we
examine the claim for an “inventive concept,” “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.’” Id. at
217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73).
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In January 2019, the Patent Office issued guidance about this
framework.8 Under the Revised Guidance, to decide whether a claim is
directed to an abstract idea, we evaluate whether the claim (1) recites one of
the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails
to integrate the recited abstract idea into a practical application (“Prong
Two”). See Revised Guidance, 84 Fed. Reg. at 51, 54. If the claim is
directed to an abstract idea, as noted above, we then determine whether the
claim has an inventive concept. The Revised Guidance explains that when
making this determination, we should consider whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” Id. at 56.
With these principles in mind, we first analyze whether claim 1 is
directed to an abstract idea.9
C. Abstract Idea
1. USPTO Step 2A, Prong One
Beginning with Step 2A, Prong One, of the Revised Guidance,10 we
determine “whether the claims at issue are directed to one of those

8 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance”); see also USPTO,
October 2019 Patent Eligibility Guidance Update (Oct. 17, 2019) (“Oct.
2019 Update”), https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf.
9 Appellant argues claims 1–20 as a group focusing on claim 1. See Appeal
Br. 8–13. Thus, our analysis focuses on representative claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
10 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by 35
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patent-ineligible concepts,” including the abstract ideas enumerated in the
Revised Guidance. Alice, 573 U.S. at 217.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the
abstract idea exception includes the following groupings of
subject matter, when recited as such in a claim limitation(s) (that
is, when recited on their own or per se): (a) Mathematical
concepts—mathematical relationships, mathematical formulas
or equations, mathematical calculations; (b) Certain methods of
organizing human activity—fundamental economic principles or
practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the
form of contracts; legal obligations; advertising, marketing or
sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or
instructions); and (c) Mental processes—concepts performed in
the human mind (including an observation, evaluation,
judgment, opinion).
Revised Guidance, 84 Fed. Reg. at 52.
For our Prong One analysis, we set aside, for consideration below, the
technological elements recited in claim 1: “Internet,” “automatic,” “a
(computer) server,” “GPS (Global Positioning System)-capable device,” “a
computer-based search engine configured to provide search results in
conjunction with advertisements,” and “a computer of the user.”11 Thus,
claim 1 recites the following steps:

U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this appeal.
11 Other technological elements recited in the claims include “a data storage
device” (claim 11), “a non-transitory computer-readable storage medium”
(claim 20), and “a web page” (claims 7 and 16). Appeal Br. 22–23, 24–25
(Claims App.).
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[a] method for facilitating the provision of . . . advertising, the
method comprising the following . . . steps: (a) receiving . . . a
notification indicating a provider geographical location of a
roving provider of a service, wherein the notification is provided
by . . . the roving provider of service; (b) . . . updating data
associated with the roving provider based on the provider
geographical location, wherein the data includes one or more
provider keywords associated with the roving provider and with
the service provided by the roving provider; (c) sending the
provider geographical location and the associated data . . . ; . . .
(d) receiving a query initiated by a user and associated with any
one of the provider keywords; (e) . . . receiving a user
geographical location . . . of the user; (f) . . . matching the user
geographical location with the provider geographical location,
within a predefined match tolerance; (g) providing . . . , . . . based
on the matching, an advertisement that is associated with the
roving provider, with the query, and with the user geographical
location; (h) providing to the user . . . the advertisement and
search results that are associated with the query; and (i)
displaying the advertisement and search results that are
associated with the query.”
“Receiving” steps (a), (d), and (e), “sending” step (c), “providing” steps (g)
and (h), and “displaying” step (i) are common examples of inconsequential,
data gathering steps the courts have determined insufficient to render an
otherwise ineligible claim patent-eligible. See MPEP § 2106.05(g); Revised
Guidance, 84 Fed. Reg. at 55 n.31; see also Bancorp Servs, L.L.C. v. Sun
Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011), aff’d,
687 F.3d at 1266 (explaining that “storing, retrieving, and providing data . . .
are inconsequential data gathering and insignificant post solution activity”).
“Updating” step (b) and “matching” step (f) are evaluation, analysis, or
judgment steps that may be performed in the human mind or with pen and
paper.
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Claim 1’s steps (a)–(i) recite a concept relating to advertising—
tailoring advertising content based on the location of the user and service
provider—which is a standard business analytics practice and an abstract
idea in the certain methods of organizing human activity grouping. See
Revised Guidance, 84 Fed. Reg. at 52. This is consistent with the
Examiner’s characterization of claim 1 as reciting the abstract concept of
“providing location based advertising for roving service providers.” Final
Act. 2; see also Ans. 6 (“[T]he current claims use[] location of a user to
provide advertising to the user. The entire premise of appellant’s invention is
to provide a user with relevant advertising of local service providers.”). As
the Examiner determines, these steps recite a concept related to the
court-identified abstract idea of “providing an advertisement to a user based
on known demographics of a user.” Id. at 2–3 (citing Affinity Labs, 838 F.3d
at 1271); accord Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1369 (Fed. Cir. 2015) (“tailoring . . . content based on
information about the user—such as where the user lives . . . is an abstract
idea . . . as old as providing different newspaper inserts for different
neighborhoods”).
We also agree with the Examiner that steps (a)–(i) of claim 1 recite a
concept related to the court-identified abstract idea of “collecting
information, analyzing it, and displaying certain results of the collection and
analysis.” Id. at 2–3 (citing Elec. Power Grp., 830 F.3d at 1353). In
particular, the “receiving” steps (a), (d), and (e) are “collecting information”
about an advertisement, “updating” step (b) and “matching” step (f) are
“analyzing the collected information” by matching the location of the user
with that of the service provider, and “providing” steps (g) and (h), as well
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as “displaying” step (i), which provide and display a location-based
advertisement to the user, are akin to “displaying certain results of the
collection and analysis.” See id. at 3. But for the recitation of generic
technological components, these steps of claim 1 describe a concept that can
be performed practically in the human mind or with pen and paper. See id.
Thus, claim 1’s steps (a)–(i) also recite an abstract idea in the mental
processes grouping. See Revised Guidance at 52, 52 n.14 (“If a claim, under
its broadest reasonable interpretation, covers performance in the mind but
for the recitation of generic computer components, then it is still in the
mental processes category unless the claim cannot practically be performed
in the mind.”). To the extent claim 1 recites more than one abstract idea, we
note that merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another
abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
In view of the foregoing, Appellant’s arguments for Step 2A,
Prong One, are not persuasive. Appellant’s arguments also fall short for the
following reasons.
First, Appellant asserts the claims are directed to a specific technical
solution (Appeal Br. 9), but Appellant does not identify any persuasive
evidence in the claims or Specification that supports this assertion. See Ans.
4. Rather, the Specification focuses on the abstract idea of facilitating the
provision of advertising (e.g., Spec. 1:6-22), and, as discussed in greater
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detail below, the claims recite no more than generic technological elements
as tools for accomplishing the recited abstract idea.
Second, the mere fact that there may be differences between the
Examiner’s food/ice cream truck example and claim 1 is not evidence of
Examiner error, nor does it show that the claims do not recite an abstract
idea. Rather, as the Examiner explains, this example was provided merely to
show that the problem addressed by Appellant’s claims is not rooted in or
exclusive to computer technology. Ans. 6–7. Moreover, the relevant
inquiry here is whether the claim recites an abstract idea in one or more of
the identified groupings. See Revised Guidance, 84 Fed. Reg. at 51–53.
And as discussed above, we determine that claim 1 recites abstract ideas in
the “certain methods of organizing human activity” and “mental processes”
groupings.
Third, Appellant asserts that claim 1 differs from the claimed subject
matter in Affinity Labs. Appeal Br. 10. But the relevant portion of Affinity
Labs is comparing an abstract idea identified in an earlier case—Intellectual
Ventures I—to the claims at issue in Affinity Labs. Affinity Labs, 838 F.3d at
1271 (describing what “[t]he court in the Intellectual Ventures I case
explained”). That abstract idea—“tailoring of content based on information
about the user—such as where the user lives”—is very similar to the abstract
concept recited in claim 1, regardless of what the Affinity Labs claims
specifically recite. Moreover, determining that a claim recites an abstract
idea does not require the claim to be identical to a court-identified abstract
idea.
Fourth, we are not persuaded by Appellant’s argument that the
Examiner’s comparison of claim 1 to the claims in Electric Power Grp. is
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“factually wrong.” Appeal Br. 9 (emphasis omitted). That the abstract idea
identified in Electric Power Grp.—“collecting information, analyzing it, and
displaying certain results of the collection and analysis”— applies to a wide
range of inventions does not exclude it from being applied to Appellant’s
claimed invention.
We therefore determine that claim 1 recites an abstract idea.
2. USPTO Step 2A, Prong Two
Because we determine that claim 1 recites an abstract idea, we turn to
Prong Two of the Step 2A step of the Alice analysis and consider whether
claim 1 integrates this abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are
any additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.”12 Revised Guidance, 84 Fed. Reg. at 54–55.
Appellant’s arguments for Step 2A, Prong Two, are not persuasive.
As an initial matter, we agree with the Examiner that the claims do not
constitute an improvement to computing technology or any other
technological field. See, e.g., Ans. 4. Rather, the Specification describes
Appellant’s invention as “facilitating the provision of advertising” by
“receiving a notification indicating a location of a roving provider of a
service, and updating data associated with the roving provider based on the

12 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A, Prong Two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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location of the roving provider.” Spec. 1:17–20. This disclosure suggests
that the purported advance lies in the underlying methodology, not in any
particular technology. We acknowledge that the Specification also describes
embodiments that incorporate technological components. For example, the
Specification describes the use of computer servers and a GPS mobile-
enabled telephone to track a plumber’s or taxi driver’s location and provide
location-based advertising. Id. at 9:15–10:6. But Appellants do not identify
any persuasive evidence, either in the claim language or the Specification,
that these technological components are an improvement over existing
technology, or that they are being used in a unique or unconventional way
beyond their ordinary purpose. In other words, the examples are focused not
on an improvement to computers or software itself, but on the use of
computers and software as tools to execute the judicial exception. See,
e.g., Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed.
Cir. 2017); Elec. Power Grp., 830 F.3d at 1354.
It may be true that the claimed technological elements achieve results
more quickly and accurately than traditional location-based advertising
methods that rely on local advertising (via newspaper, yellow pages, radio,
or television) and interactions with customers (via landline telephone,
door-to-door canvassing, or mail surveys). But, “relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, contrary to Appellant’s
assertions, the mere fact that the server operates “in real-time and
automatically” does not show that the claim is “directed to a technological
solution rooted in the internet and computer technologies.” Appeal Br. 10.
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We also disagree with Appellant’s characterization of the claims as
analogous to the patent-eligible claims in DDR and Enfish. The Federal
Circuit has held certain claims that recite a technological solution to a
technological problem specifically arising in the realm of computing or
Internet technology to be patent eligible. See, e.g., DDR, 773 F.3d at 1257–
58; Enfish, 822 F.3d at 1336–37. For example, the patent-eligible claim at
issue in DDR Holdings recited limitations for providing a composite web
page based on a link activation occurring at a remote computer, thereby
addressing “a challenge particular to the Internet.” DDR, 773 F.3d at 1257–
58. The claim in Enfish employed a self-referential database table that was
an improvement to database technology. See Enfish, 822 F.3d at 1336–37.
By contrast, claim 1 simply recites the use of computing elements at a
broad, generic level as tools for facilitating the provision of location-based
advertising, without any improvement to computing or software
functionality itself. Moreover, the features Appellant argues provide a
technological improvement—an unconventional server that converts an
advertiser’s roving location (such as a GPS sensor measurement) to bid
parameters interfaced to the API of the search engine—are not recited in the
claims, nor are they disclosed the Specification. See Ans. 5; Appeal Br. 9–
13.
Although claim 1 recites specific steps (for example, the use of
provider keywords), these pertain to the recited abstract idea, not any
additional technological element. Narrowing the recited abstract idea or
limiting it to a particular field of use in this way does not change our overall
understanding of the claims and, thus, does not render the claims
non-abstract. See Revised Guidance, 84 Fed. Reg. at 55, id. n.32; see also,
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e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(determining that even though “some of the eleven steps were not previously
employed in this art,” that was “not enough—standing alone—to confer
patent eligibility upon the claims at issue.”). Likewise, the claim’s use of
computing elements over the Internet merely links the recited abstract idea
to a known technological environment. See Revised Guidance, 84 Fed. Reg.
at 55 n.32. Nor is the fact that data is being operated on and manipulated in
a particular way evidence of a technological advance. Rather, this merely
reflects the manipulation or reorganization of data, which fails to transform
an otherwise patent-ineligible concept into an eligible one. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).
In sum, claim 1 does not recite a technological improvement to
computing, software, communications, or any other technology. Rather, “it
is clear, from the claims themselves and the specification, that these
limitations require no improved computer resources [Appellant] claims to
have invented, just already available computers, with their already available
basic functions, to use as tools in executing the claimed process.” SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1169–70 (Fed. Cir. 2018).13 Indeed,
the Specification describes the invention as requiring no more than
general-purpose computing elements for performing generic computing

13 See also Revised Guidance, 84 Fed. Reg. at 55 (explaining that courts
have identified “merely us[ing] a computer as a tool to perform an abstract
idea” as an example of when a judicial exception may not have been
integrated into a practical application); Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“In this case, the
claims are directed not to an improvement in cellular telephones but simply
to the use of cellular telephones as tools in the aid of a process focused on an
abstract idea. That is not enough to constitute patentable subject matter.”).
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functions. See, e.g., Spec. 4:11–6:16 (describing possible hardware and
software components in broad, generic terms), 6:17–8:27 (describing
computer servers, computer user, web page, and GPS-capable device, in no
more than generic terms), Fig. 1. Nor does Appellant identify any
persuasive evidence that claim 1 requires any specialized computer hardware
or other inventive technological components, such as a particular machine,
for performing the claimed invention.
Accordingly, consistent with the Examiner’s findings (see Final Act.
3–4; Ans. 5–8), and in view of Appellant’s disclosure (see, e.g., Spec. 4:11–
8:27, Fig. 1), we determine that claim 1 does not integrate the judicial
exception into a practical application, and thus is directed to the judicial
exception itself. In particular, we determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP § 2106.05(a)–(c), (e)–(h).
3. USPTO Step 2B — Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether any additional claim elements “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate whether the additional
claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field” or
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“simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
The Examiner finds:
The claims merely outline an abstract idea which uses
well-understood, routine, and conventional computing elements
with no recitations of technical features which are used to
accomplish this. Use of GPS enabled devices to provide location
information, using a server to update location information, and
providing this information to a search engine for inclusion in
online advertising provide no technical improvements to
technology, but rather use well-understood, routine, and
conventional computing to implement the abstract idea.
Ans. 4 (citing Spec. 1).14 The Examiner also finds:
Looking at the elements as a combination does not add anything
more than the elements analyzed individually as the combination
of elements does not provide any improvement to a computer or
to another technology. The claims collect location data via a GPS
device, use this data to update location information, and provide
location and keyword information to a search engine in well-
understood routine and conventional manner. Similarly, using a
search engine to target advertising based on a match between the
user’s location and keywords and a vendor’s location and
keywords is also well-understood, routine, and conventional.
Final Act. 4.
The Examiner’s findings are amply supported by the Specification,
which indisputably shows the additional elements of claim 1 were
well-understood, routine, and conventional activities at the time of filing

14 See also Ans. 5 (“Using a server to perform operations automatically and
in real-time is well-understood, routine, and conventional use of a server and
happens across the internet constantly and has since the advent of online
advertising.”); id. at 6–8.

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because they are described in a general manner without additional details
that would distinguish them from conventional components. See, e.g., Spec.
4:11–8:27, Fig. 1). And, as discussed above, we have determined that claim
1 does not recite a technological improvement to computers, computer
components, software, or communications.
In view of the foregoing, considering claim 1 as a whole, we
determine that the additional claim elements do not provide “a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field.” Revised Guidance, 84 Fed. Reg.
at 56. Rather, these elements do no more than “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Id. Accordingly, we
determine that claim 1 does not have an inventive concept.
Conclusion
For the reasons stated above, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 101. For those same reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of independent claims 11 and
20, which recite similar limitations and were not argued separately with
particularity. We likewise sustain the Examiner’s rejection under 35 U.S.C.
§ 101 of dependent claims 2–10 and 12–19, which merely narrow the recited
abstract idea and were not argued separately with particularity. See Final
Act. 4.
II. REJECTIONS UNDER 35 U.S.C. § 103(a)
A. Claims 1, 3–11, and 13–20
Appellant argues Examiner error because Bruecken and Wang, alone
or in combination, fail to disclose or suggest “using a non-conventional
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server for converting the vendor real-time geographical data to bid
parameters, and interfacing the bid parameters to the search engine API
automatically in real time.” Appeal Br. 16; see also id. at 14–16. In
particular, Appellant asserts that Bruecken “does not operate when a user
performs a regular Internet search” and that it “does not teach [] using a
separate server to receive geographical location data from a roving provider,
converting the geographical location data to bid parameters, and interfacing
to search engine API to update the bid parameters to the search engine.” Id.
at 14. Appellant further asserts that “throughout Bruecken, the inventory is
only used to determine if the vendor can provide the appropriate services to
the client, and nowhere in Bruecken is disclosed a conversion, as on a
server, between a geographical location and bid parameters for sending
vendor information to the client.” Id. Appellant also asserts that “Wang is
silent regarding collecting a vendor’s location using a GPS-enabled device,
and is further silent regarding using a server for converting the vendor real-
time geographical data to bid parameters, and interfacing the bid parameters
to the search engine API automatically in real time.” Id. at 15.
We are not persuaded of error because Appellant’s arguments are not
commensurate with the scope of the claim. Claim 1 recites, in relevant part
receiving, at a server, a notification indicating a provider
geographical location of a roving provider of a service, wherein
the notification is provided by a GPS (Global Positioning
System)-capable device of the roving provider of service;
at the server, updating data associated with the roving
provider based at the server, updating data associated with the
roving provider based on the provider geographical location,
wherein the data includes one or more provider keywords
associated with the roving provider and with the service
provided by the roving provider; and
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sending the provider geographical location and the
associated data from the server to a computer-based search
engine that is configured to provide search results in conjunction
with advertisements.
The Examiner finds Bruecken in combination with Wang teaches or
suggests these claim elements. Final Act. 5–7. In particular, the
Examiner finds Bruecken teaches using GPS to determine the
geographic location of a vendor’s vehicle or base of operations, and a
host server that periodically receives updates on the vendor’s location
and also determines the location of a client or potential customer. Id.
at 5 (citing Bruecken ¶¶ 5, 53, 55–57, Fig. 4). The Examiner finds
Wang teaches an advertising system that performs a location-based
search for advertisements in which a “user submits a query for content
and receives content and advertising based on a match between the
user[’]s location and query to the location and keywords of the
advertisements.” Id. at 7 (citing Wang ¶¶ 19–24). The Examiner
reasons that “[i]t would have been obvious . . . to modify the teachings
of Bruecken to include search results and advertisements relevant to a
query and location of the user as taught by Wang in order to provide a
user with locally relevant advertisements.” Id. (citing Wang ¶¶ 1–8).
The Examiner reasons further that “since each element of the
combination performs the same functions individually as they do in
the combination[,] one of ordinary skill in the art would find the
combination to yield predictable results.” Id.
Contrary to Appellant’s contentions, however, claim 1 does not
recite or require “converting the geographical location data to bid
parameters” or “interfacing to search engine API to update the bid
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parameters to the search engine.”15 Nor does the Specification
describe these features. Instead, the Specification describes that
advertising data may include bid policy information, and that
[r]oving provider data 106 may be updated to include any of the
following based on the different locations of roving provider
102:
- one or more keywords associated with the location
of roving provider 102, such as a city name and/or a street
address associated with the location,
- one or more keywords associated with roving
provider 102 and/or the service provided by roving provider 102,
- advertising and/or advertising components, such as
wording or associated hypertext links as described hereinbelow,
- bid information associated with any of the above,
where any of the above are provided by computer server 100 to
computer server 108, by computer server 108 itself, or both. . . .
where computer server 108 is a search engine.
Spec. 7:16–30. The Specification also describes changing bid
information associated with advertising in order to promote certain
advertising. Id. at 9:10–13. While these disclosures appear to
adequately describe what is recited by the claim language, they do not
cover the features argued by Appellant.
Moreover, the Examiner’s findings and rationale described above are
reasonable. And Appellant does not point out, with particularity, why the

15 Dependent claim 2 further limits claim 1 by reciting that “the updating
step comprises updating . . . (b) a bid information associated with the
advertisement,” but it too does not recite or require the features argued by
Appellant.

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asserted combination of prior art does not teach or suggest the actual claim
language.
We therefore sustain the Examiner’s § 103(a) rejection of independent
claim 1, as well as the § 103(a) rejection of independent claims 11 and 20,
which recite substantially similar limitations and were not argued separately
with particularity. We also sustain the Examiner’s rejection of dependent
claims 3–10 and 13–19, which were not argued separately with particularity.
B. Claims 2 and 12
Dependent claim 2 recites “[t]he method according to claim 1,
wherein the updating step comprises updating (a) the associated data to
include a keyword associated with the provider geographical location and
(b) a bid information associated with the advertisement.” Appeal Br. 21
(Claims App.). Claim 12, which depends from independent claim 11, recites
similar elements. Id. at 24 (Claims App.).
Appellant argues Examiner error because the proposed prior art
combination fails to disclose or suggest these claim elements. Appeal Br.
19; see also id. at 16–19. In particular, Appellant asserts that “Hoffman
teaches that the retailer can manually update bidding parameters, including
‘the geographic location of a purchase,’ which is completely different from
the element[s] recited in claims 2 and 12.” Appeal Br. 19.
We are not persuaded of error. As an initial matter, Appellant does
not explain why the cited portions of Hoffman are “completely different”
from the claim language at issue. In other words, Appellant’s argument does
not specifically identify and explain how the claim language at issue is
patentably distinguishable from the cited disclosures of the prior art
references. For this reason alone, we are not persuaded of Examiner error
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because the argument amounts to a general allegation that the claims define
a patentable invention. See 37 C.F.R. § 41.37(c)(1)(vii) (noting that an
argument that merely points out what a claim recites is unpersuasive); see
also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Moreover, the Examiner’s findings and rationale for the additional
elements of claims 2 and 12 are reasonable. See Final Act. 10 (citing
Hoffman 123:9–28). In particular, Hoffman’s disclosure that “a keyword
associated with a user’s purchase may be the subject of such bids, said
keyword comprising: . . . the geographic location of a purchase” teaches or
at least suggests “updating (a) the associated data to include a keyword
associated with the provider geographical location.” Id. (citing Hoffman
123:13–16). And Hoffman’s disclosure that “[w]hen a User purchases a
product on which an Account Issuer has the highest bid, the Account Issuer
can issue an electronic or printed coupon, make an adjustment to Financial
Data in a User’s rewards/loyalty Financial Account 65, or influence the
Ranking 96 of a Financial Account 65” teaches or at least suggests
“updating . . . (b) a bid information associated with the advertisement.” Id.
(citing Hoffmann 123:18–24).
We therefore sustain the Examiner’s § 103(a) rejection of dependent
claims 2 and 12.
III. CONCLUSION
We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101.
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We affirm the Examiner’s rejections of claims 1–20 under pre-AIA 35
U.S.C. § 103(a).

SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 3–11,
13–20
103(a) Bruecken, Wang 1, 3–11,
13–20

2, 12 103(a) Bruecken, Wang,
Hoffman
2, 12
Overall
Outcome
1–20

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