Richard Lang

Patent Trials and Appeals Board

Jan 21, 2020

13601984 - (D) (P.T.A.B. Jan. 21, 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.
13/601,984 08/31/2012 Richard Lang DEMOC-004 5934
138718 7590 01/21/2020
Polsinelli LLP
3 Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
GAW, MARK H
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
01/21/2020 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):
sfpatent@polsinelli.com
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD LANG
____________

Appeal 2018-008839
Application 13/601,984
Technology Center 3600
____________

Before MAHSHID SAADAT, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY III, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1, 16, 17, and 21–33. Claims 2–15 and 18–20 are canceled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Introduction
Embodiments of Appellant’s invention “relate to the ability of content
providers in a variety of mediums to monetize content or ‘grabbed’ content

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Democrasoft, Inc. See Appeal Br. 3.

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used in the context of a content creation service, social bookmarking toolbar,
or mobile device application . . . . The present invention also allows a
content provider to customize licensing terms and provisions for content.”
Spec. ¶ 1.

Rejections
A. Claims 1, 16, 17, and 21–33 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more. See
Final Act. 6.
B. Claims 1, 16, 17, 22, 25–27, 30, and 32 are rejected under pre-AIA 35
U.S.C. 103(a) as being obvious over the combined teachings and
suggestions of Wong, US 2009/0281908 A1; pub. Nov. 12, 2009
(hereinafter “Wong”') in view of Marcus, US 2006/0015904 A1, pub.
Jan. 19, 2006 (hereinafter “Marcus”). See Final Act. 15.
C. Claims 28, 29, and 31 are rejected under pre-AIA 35 U.S.C. 103(a) as
being obvious over the combined teachings and suggestions of Wong,
Marcus, and Official Notice. See Final Act. 21.
D. Claims 21, 23, 24, and 33 are rejected under pre-AIA 35 U.S.C.
103(a) as being obvious over the combined teachings and suggestions
of Wong, Marcus, and Ginter et al. US 6,253,193 B1; iss. June 26,
2001 (hereinafter “Ginter”). See Final Act. 23.

Issues on Appeal
Did the Examiner err in rejecting claims 1, 16, 17, and 21–33 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
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Did the Examiner err in rejecting claims 1, 16, 17, and 21–33 under
pre-AIA 35 U.S.C. § 103(a), as being obvious over the combined teachings
and suggestions of the cited references?

ANALYSIS
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. To the
extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Principles of Law
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Supreme
Court also indicated that a claim “seeking patent protection for that formula
in the abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
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an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO § 101 Guidance
The U. S. Patent and Trademark Office (USPTO) published revised
guidance on the application of § 101. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (“2019 Memorandum”).2 Under that guidance, we first look to
whether the claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,

2 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.
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mathematical concepts, certain methods of organizing human activity
such as a fundamental economic practice, or mental processes); and
(2) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).3
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Memorandum Step 2B.

Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Memorandum - Section III(A)(2).
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2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. 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).
See 2019 Memorandum, 84 Fed. Reg. at 52.
According to the 2019 Memorandum, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
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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
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Memorandum, Step 2A, Prong One4
The Judicial Exception
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes that claim 1 recites an abstract idea, because
the claim describes:
generating license terms and pricing for a user based on a
selected portion of content, which is considered to be an abstract

4 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

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idea inasmuch as such activity is considered to be a fundamental
economic practice (i.e., generating license terms and pricing for
a user based on a selected portion of content is a fundamental
economic practice of the advertising/television/film/media
industries), a method of organizing human activity by
providing a method for generating license terms and pricing for
a user based on a selected portion of content (particularly as
limitations of the claims may be broadly interpreted as involving
human activity, e.g., involving human manipulation and
recognition of data), and an algorithm for generating license
terms and pricing for a user based on a selected portion of content
(for example, generating license terms and pricing for a user
based on a selected portion of content at least implies calculating
criteria based on mathematical relationships or formulas,
e.g., amount of media, licensing criteria, relative demand, etc.).
Final Act. 7 (emphasis added).
The Examiner cites to a large number of Federal Circuit case
authorities in support. Final Act. 7–11. In this Decision, we apply the
Director’s 2019 Memorandum de novo. In Table One below, we identify in
italics the specific claim limitations that we conclude recite an abstract idea.
We identify in bold the additional (non-abstract) claim limitations that are
generic computer components.

TABLE ONE
Independent Claim 1 2019 Memorandum
[a] A method for monetizing
content, comprising:
A method falls under the statutory
subject matter class of a process.
See 35 U.S.C. § 101 (“Whoever
invents or discovers any new and
useful process, machine,
manufacture, or composition of
matter, or any new and useful
improvement thereof, may obtain a
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Independent Claim 1 2019 Memorandum
patent therefor, subject to the
conditions and requirements of this
title.”).

Abstract idea: Monetizing
content is a fundamental
economic practice including
the subcategories of
commercial interactions such
as agreements in the form of
contracts, sales activities or
behaviors and business
relations that could also be
performed alternatively as
mental steps. See 2019
Memorandum 52.

[b] receiving user input
selecting a portion of content
via a user interface
associated with a user
device, wherein the selected
portion of content is less than
an entirety of the content that
is owned by a content
provider, and wherein the
entirety of the content is
stored in memory associated
with the content provider;
and
Receiving user input is an
insignificant extra-solution activity
(i.e., data gathering). 2019
Memorandum, 55 n.31; see also
MPEP § 2106.05(g).

Abstract idea: Selecting a portion of
content is performed by a user as a
mental step. See 2019 Memorandum
52.
The use interface, user device, and
memory associated with the content
provider are additional non-abstract
limitations.
[c] executing instructions
stored in memory of an
application server, wherein
execution of the instructions
The processor and memory of the
application server are additional non-
abstract limitations.

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Independent Claim 1 2019 Memorandum
by a processor of the
application server:
[d] atomizes the content by
creating a new content
package based on the
selected portion of the
content,
Abstract idea: Atomizing the
content by creating a new content
package based on the selected
portion of the content could be
performed alternatively as a mental
step. See 2019 Memorandum 52.

[e] retrieves license
information associated with
the entirety of the content,
wherein the license
information includes prices
and terms for use of the
entirety of the content,
Retrieving license information
associated with the entirety of the
content is insignificant extra-solution
activity (i.e., data gathering). See
2019 Memorandum, 55 n.31; see
also MPEP § 2106.05(g).

[f] retrieves a user profile
associated with the user,
wherein the user profile
includes a classification of
the user,
Retrieving a user profile associated
with the user is insignificant extra-
solution activity (i.e., data
gathering). See 2019 Memorandum,
55 n.31; see also MPEP
§ 2106.05(g).

[g] generates custom license
terms and pricing for the user
based on the selected portion
of the content, the retrieved
license information, and the
user profile, and
Abstract idea: Generating custom
license terms and pricing for the user
based on the selected portion of the
content is a method of organizing
human activity and is a fundamental
economic practice including the
subcategories of commercial
interactions such as agreements in
the form of contracts, sales activities
or behaviors and business relations
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Independent Claim 1 2019 Memorandum
that could be performed alternatively
as a mental step. See 2019
Memorandum 52.
[h] authorizes the user
device to access the selected
portion of content based on
the generated custom license
terms when payment is
received in accordance with
the generated custom pricing.
Abstract idea: Conditionally
authorizing the user device to access
the selected portion of content based
on the generated custom license
terms when payment is received in
accordance with the generated
custom pricing is a fundamental
economic practice including the
subcategories of commercial
interactions such as agreements in
the form of contracts, sales activities
or behaviors and business relations
that could be performed alternatively
as a mental step. See 2019
Memorandum 52.
The user device is an additional non-
abstract limitation.

Abstract Ideas — Mental Processes
and Fundamental Economic Practices
After considering representative claim 1 as a whole, we conclude the
recited italicized functions shown in Table One implement a fundamental
economic practice (licensing user-selected portions of content to monetize it)
that falls into the subcategories of commercial interactions such as
agreements in the form of contracts, sales activities or behaviors and
business relations that could also be performed alternatively as a mental
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process. 5 See 2019 Memorandum, 84 Fed. Reg. at 52. See also
“Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (‘[W]ith 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.’).” 2019
Memorandum, 84 Fed. Reg. at 52 n.14.
“An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Merely combining several abstract ideas does not render the
combination any less abstract. See RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).

5 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource, 654 F.3d at 1372–73; “That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”
CyberSource, 654 F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a
computer to accelerate an ineligible mental process does not make that
process patent-eligible.” Bancorp Services, L.L.C. v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on
a computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).

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For at least these reasons, we conclude representative independent
claim 1 recites the specific types of abstract ideas identified above in Table
One.
Additional Limitations
As emphasized in bold in Table One, supra, we note the additional
non-abstract limitations recited in representative claim 1: a user interface, a
user device, a memory associated with the content provider, a processor, and
a memory of the application server. We further note the supporting
exemplary descriptions of generic computer components in the
Specification, for example:
In FIGURE 1, a user (105A, 105B) accesses a content creation
service, social bookmarking toolbar, or mobile device
application using any computing device (110A, 110B) (e.g.,
workstation, server, lap top computer, cellular telephone,
mobile device, etc.) capable of accessing information over a
communication network 115 known in the art. Computing
device (110A, 110B) may receive data or a request (e.g., from
another computing device) and send the data or request over
communications network 115 to application server 120 for
processing. Communications network 115 is inclusive of any
communications network such as the Internet, Wide Area
Network (WAN), Local Area Network (LAN), intranet,
extranet, private network, or other network.
Spec. ¶ 8 (emphasis added).
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., (837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra Table One.
Because we conclude all claims 1, 16, 17, and 21–33 on appeal recite an
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abstract idea, as identified above, under Step 2A, Prong One, we proceed to
Step 2A, Prong Two.

2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 54–55.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Appellant argues:
the present claims should be viewed as being an improvement
in computer technology by facilitating this inventive method of
allowing each user to consume only the content that user desires
and paying a corresponding price for the desired content.

No such parallel is possible with respect to providing specific
smaller portions for the user to purchase outside the realm of
computer technology. For example, a user would not be capable
of purchasing a single paragraph from a book or 15 sec of a song
from a record found in a store. As such, the ability to atomize
digital content and provide customized licensing terms (and
pricing) is inextricably tied to computer technology.
Appeal Br. 9 (emphasis added).

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Appellant further urges in the Reply Brief:
The implementation of atomizing content improves the
existing computer technology associated with delivering digital
content specific to a user’s needs. As a result, acquisition of
content is incentivized whereas a user may now purchase the
atomized content whereas, before, the purchase would not be
consummated to avoid acquiring and/ or paying for undesired
ancillary aspects of the same.
Reply Br. 9 (emphasis added).
However, providing the feature of user selection of sub-portions of
content for the purpose of monetizing such content is an abstract idea (i.e., a
mental step and/or fundamental economic practice), as detailed in Table One
above. To the extent that user selection of content is made more granular by
the claimed invention (e.g., selecting an individual song instead of an entire
musical album), we note an improved abstract idea is still an abstract
idea. See Mayo, 566 U.S. at 90 (holding that a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless patent-ineligible). See also
Synopsys, 839 F.3d at 1151 (“[A] claim for a new abstract idea is still an
abstract idea.”) (emphasis omitted);
Moreover, as set forth in MPEP § 2106.05(a):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method. Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.
(Emphasis added).
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Here, Appellant has not provided sufficient details regarding how the
recited user interface, user device, memory associated with the content
provider, processor, and memory of the application server (claim 1) include
more than mere instructions to perform the recited functions to qualify as an
improvement to an existing technology.
As discussed above, we conclude Appellant’s generic computer
implementation performs a method of organizing human activity including
fundamental economic practices that can be performed alternatively as
mental processes. See independent Claim 1. Moreover, the “‘mere
automation of manual processes using generic computers’ . . . ‘does not
constitute a patentable improvement in computer technology,’” Trading
Techs. Int’l v. IBG LLC, 921 F.3d at 1384 (quoting Credit Acceptance Corp.,
859 F.3d at 1055).
Accordingly, on this record, we conclude independent claim 1 does
not recite an improvement to the functionality of a computer or other
technology or technical field. See MPEP § 2106.05(a).
MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test (“MoT”)

We note the Supreme Court cautions that the MoT test is not the sole
test, but may provide a useful clue:
This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”

Bilski, 561 U.S. at 604 (emphasis added).
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Here, Appellant advances no arguments that any of method claims 1,
and 21–33 are tied to a particular machine, or transform an article to a
different state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) — Meaningful Claim Limitations6
Appellant does not advance further substantive, persuasive arguments
as to any specific “meaningful” claim limitations, such as those of the types
addressed under MPEP § 2106.05(e), that impose meaningful limits on the
judicial exception.
As discussed above, we conclude the recited italicized functions
shown in Table One could also be performed alternatively as a mental
process. See 2019 Memorandum, 84 Fed. Reg. at 52. As also discussed
above, we see nothing in Appellant’s claims that specifically improves the
efficiency of the user interface, user device, memory associated with the
content provider, processor, and memory of the application server (claim 1),
or another technology or technical field, as addressed above under MPEP
§ 2106.05(a).
Accordingly, on this record, we conclude representative independent
Claim 1 has no other argued meaningful limitations, as considered under
section 2106.05(e) of the MPEP, pursuant to the 2019 Memorandum.

6 See 2019 Memorandum, 84 Fed. Reg. 55, citing MPEP § 2106.05(e):
“[A]pply[ing] or us[ing] 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.” (emphasis added).

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MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea

We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One, and as supported in our reproduction
of the Specification, paragraph 8, supra. Thus, we conclude Appellant’s
claims merely use a computer/processor as a tool to perform an abstract idea.

MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception

As mapped in the right column of Table One, supra, we conclude that
representative independent Claim 1 recites extra or post-solution activities
that courts have determined to be insufficient to transform judicially
excepted subject matter into a patent-eligible application. See MPEP
§ 2106.05(g); 84 Fed. Reg. at 55 n.31.

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
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‘insignificant postsolution activity.’” Bilski, 561 U.S. at 611–12, (quoting
Diehr, 450 U.S. at 191–92).
Here, Appellant advances no lack of preemption argument in the
Appeal Brief. Nor do claims 1, 16, 17, and 21–33 on appeal present any
other issues as set forth in the 2019 Memorandum regarding a determination
of whether the additional generic elements integrate the judicial exception
into a practical application. See 2019 Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1, 16, 17, and 21–33 do not integrate the judicial
exception into a practical application. Therefore, we proceed to Step 2B,
The Inventive Concept.

The Inventive Concept – Step 2B
Under the 2019 Memorandum, only if a claim: (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
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Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).7
Under Step 2B, the Examiner finds, inter alia:
Thus, the claim as a whole may be considered to merely apply
the abstract idea of generating license terms and pricing for a
user based on a selected portion of content to being performed
using generic computing devices, with the additional elements
adding insignificant extra-solution activity (e.g., mere data
gathering and well-understood, routine, and conventional
computing activities). In other words, the claim as a whole
provides a generically computer-implemented solution to a
business-related, financial, or economic problem (i.e.,
generating license terms and pricing for a user based on a
selected portion of content). Regarding Step 2B, “the courts
have recognized the following computer functions to be well-
understood, routine, and conventional functions when they are
claimed in a merely generic manner: performing repetitive
calculations; receiving, processing, and storing data;
electronically scanning or extracting data from a physical
document; electronic recordkeeping; automating mental tasks;
and receiving or transmitting data over a network, e.g., using
the Internet to gather data.” See July 2015 Update on Subject
Matter Eligibility, Federal Register, Vol. 80, No. 146,
document entitled “July 2015 Update: Subject Matter
Eligibility” at pg. 7 [regarding Step 2B, internal footnotes
omitted].
Final Act. 11 (emphasis added).
Appellant cites to Berkheimer and argues in the Reply Brief:
But the present invention allows for the ability to atomize
content — a feature not presently available anywhere; the
Examiner has not provided nor does the Examiner's Answer
provide (at least in accordance with Berkheimer) why
atomization of content is viewed as an insignificant extra-

7 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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solution activity. There is no clear and convincing evidence that
shows that atomization of content is considered well-
understood, routine, and convention computing activity.
Reply Br. 10 (emphasis added).
Contrary to Appellant’s argument that “the present invention allows
for the ability to atomize content — a feature not presently available
anywhere” id., we find Appellant’s Specification expressly describes a well-
known example of atomization of musical album content: “A consumer, at
best, can purchase a musical track from a full album but otherwise does
not have the means to atomize content.” Spec. ¶ 2 (emphasis added).
Moreover, we note the Examiner provides Berkheimer evidence in support
of the well-understood, routine, and conventional fact findings in the form
of citations to numerous Federal Circuit case authorities, which Appellant
has not substantively and persuasively distinguished from the claims before
us on appeal. See Final Act. 11–13, 33, 34, 38.
We agree with the Examiner that it was well-understood, routine, and
conventional for users to interact with computers to make selections at the
time of the invention. However, we also conclude the selection by a user of
particular content, or sub-portions of such content, necessarily involves a
mental step to select the particular sub-portions of content desired — i.e., an
abstract idea, as discussed above under Step 2A, Prong One.
Further, regarding the use of the recited generic computer components
identified above in Table One, the Supreme Court has held “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing
court provides additional guidance: See FairWarning, 839 F.3d at 1096
(“[T]he use of generic computer elements like a microprocessor or user
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interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter
alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite “‘well-
understood, routine conventional activit[ies],’ either by requiring
conventional computer activities or routine data-gathering steps” (alteration
in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellant has not shown that the claims on appeal add a specific limitation
beyond the judicial exception that is not well-understood, routine, and
conventional, when the claim limitations are considered both individually
and as an ordered combination. See MPEP § 2106.05(d).
In light of the foregoing, we conclude, under the 2019 Memorandum,
that each of Appellant’s claims 1, 16, 17, and 21–33, considered as a whole,
is directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of claims 1, 16, 17, and
21–33.8

8 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 41.37(c)(1)(iv).

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Rejection B of Independent Claim 1 under § 103(a)
Based upon Appellant’s arguments, and our discretion under 37
C.F.R. § 41.37(c)(1)(iv), we decide the appeal of §103(a) Rejection B of
claims 1, 16, 17, 22, 25–27, 30, and 32 on the basis of representative
claim 1.
Issue: Under 35 U.S.C. § 103(a), we focus our analysis on the
following argued limitation that we find to be dispositive regarding
obviousness Rejections B, C, and D of all claims 1, 16, 17, and 21–33:
Did the Examiner err by finding that Wong and Marcus would have
collectively taught or suggested the disputed “d” limitation of: “atomiz[ing]
the content by creating a new content package based on the selected portion
of the content,” within the meaning of independent representative claim 1?
See supra, n.4. See supra Table One, atomizing Step “d.”
The Examiner relies principally on Marcus to teach or suggest the
contested atomizing step “d” of claim 1 (see supra Table One), citing
paragraphs 45, 327, 349, 452, and 453. See Final Act. 17–18.
Appellant argues:
However, the ability to have content be atomized and thus
assembled in any number of different ways for a user to
customize their viewing experience as described in Marcus
is distinct from ‘atomizes the content by creating a new content
package based on the selected portion of content.’ Whereas
Marcus is directed to aggregating different individual program
elements to generate content that the user is viewing, the
subject matter of the independent claim atomizes (or breaks
down) content into smaller portions based on what the user
specifically desires. In other words, the present claims
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operate in reverse to what Marcus is teaching. Furthermore,
Marcus does not disclose, teach, or suggest that the atomized
content (e.g. morning weather personality or late night
talk-show host content) can be atomized further. Marcus
discloses content that is already broken down into smaller
atoms for assembly. Each of these smaller “atoms”
are individual clips or content that the users in Marcus can
assemble together with other media to customize a viewing
program. However, there may be some situations where
the content within Marcus still includes undesired portions.
Marcus does not allow for users to atomize the content even
further as claimed.

Therefore, the Appellant submits that the subject matter of the
independent claims should be viewed as being distinct from
Marcus. As noted above, Wong does not explicitly disclose the
claimed subject matter regarding atomizing content. Therefore,
Wong does not cure the above stated deficiency with respect to
atomizing content with reference to Marcus.
Appeal Br. 11 (emphasis added).
The Examiner disagrees with Appellant, and further explains the
mapping and basis for the rejection of Step “d” of claim 1:
See Marcus, at least at [0045], [0327], [0349], [0377],
[0452]-[0453] {atomizing content (see, e.g., [0045], media
"atoms", [0327], creating content "atomistically", [0349],
"atomization" of "forms and types of media") includes creating
a new content package(s) based on selected portions of content
(see, e.g., [0377], media "clips are structured as a package",
[0452][ 0453], creating "packages" of media for download)}.
Ans. 14.
The Examiner explains:

The ability to atomized content is the same in both cases,
i.e., without the ability, one cannot atomize the content. Once
the system has the ability, whether the user decide to atomize
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the before or after a particular undefined moment is just a
particular usage of that ability.

In Marcus, further atomization is possible. There is no
prohibition or the system inability to further atomize content.
Also, the finite atomization could be done upfront based on the
user’s need or base[d] [on] minimizing content to match the
quantum of [a] human's sensory ability.
Ans. 14–15 (emphasis added).
As particularly noted by Appellant above, “Marcus is directed to
aggregating different individual program elements to generate content that
the user is viewing.” Appeal Br. 11. Appellant thus argues that “the
present claims operate in reverse to what Marcus is teaching.” Id.
However, we note that teaching an alternative or equivalent method does not
“teach away” from the use of a claimed method. In re Dunn, 349 F.2d 433,
438 (CCPA 1965).
Marcus, as found by the Examiner (Final Act. 17; Ans. 14), teaches
that “entire programs can be created from aggregates of other program
elements to not only shift the time-of-viewing globally, but atomistically.”
Marcus ¶ 327 (emphasis added). We find such generation of new content
packages from aggregates of other program elements teaches or suggests
creating content. See Id.
Moreover, we find at least this feature of Marcus (¶ 327) teaches or
suggests the disputed claim 1 Step “d” limitation of “atomiz[ing] the content
by creating a new content package based on the selected portion of the
content” (emphasis added), because Appellant’s Specification repeatedly
uses the term “creation” as being interchangeable and/or synonymous with
the term “atomization.” See e.g., Spec. ¶ 7 “FIGURE 1 illustrates a system
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for monetizing content used in the context of a content creation (or
atomization) service.” (emphasis added). See also Spec. ¶ 8: “Content
monetization system 100 may include a number of users and computing
devices in connection with a content creation (or atomization) service,
social networking toolbar, or mobile device application.” (emphasis added).
See also Spec. ¶ 9: “Using computing device 110A, user 105A may
subscribe or register (e.g., create an account) with a content creation (or
atomization) service.”
Further, we find the Examiner’s legal conclusion of obviousness is
buttressed by the teachings of Wong. We find Wong cumulatively teaches
the disputed claim 1 Step “d” limitation of “atomiz[ing] the content by
creating a new content package based on the selected portion of the content,”
because Wong expressly teaches user selection of song stems, which are
sub-portions of the various individually recorded tracks of a multi-track song
recording:
In alternative embodiments this section may include integrated
songs, songs for which multiple stems can be individually
manipulated, and individual stems. In yet other components,
the list indicates which songs/stems have been purchased and
which stems have not yet been purchased but which have been
selected by the user from the online store 204 to be available
in the studio 300.
Wong ¶ 48 (emphasis added).
Therefore, based upon a preponderance of the evidence, we are not
persuaded the Examiner erred regarding the claims rejected under Rejection
B. Accordingly, we sustain the Examiner’s Rejection B of claims 1, 16, 17,
22, 25–27, 30, and 32 under 35 U.S.C. § 103(a).
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Rejections C and D under §103(a) of all Remaining Dependent Claims
Appellant advances no separate, substantive arguments for the
remaining dependent claims rejected under 35 U.S.C. § 103(a); therefore,
such arguments are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSIONS
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude all claims 1, 16, 17, and 21–33, rejected under 35
U.S.C. § 101, are directed to patent-ineligible subject matter.
The Examiner did not err in rejecting claims 1, 16, 17, and 21–33, as
being obvious under pre-AIA 35 U.S.C. § 103(a), over the combined
teachings and suggestions of the cited references.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)Basis Affirmed Reversed
1, 16, 17, 21–33 101 Eligibility 1, 16, 17,
21–33

1, 16, 17, 22,
25–27, 30, 32
103(a) Wong, Marcus 1, 16, 17,
22,
25–27,
30, 32

28, 29, 31 103(a) Wong, Marcus,
Official Notice
28, 29, 31
21, 23, 24, 33 103(a) Wong, Marcus,
Ginter
21, 23,
24, 33

Overall
Outcome
1, 16, 17,
21–33

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