THOMSON LICENSING

Patent Trials and Appeals Board

Mar 31, 2021

2019006561 (P.T.A.B. Mar. 31, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/535,058 06/11/2017 Arden A. ASH 2014P00137WOUS 9315
14868 7590 03/31/2021
Patent Docketing
200 Bellevue Parkway, Suite 300
Attention: Docketing
Wilmington, DE 19809
EXAMINER
TAYLOR, JOSHUA D
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
03/31/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@interdigital.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARDEN A. ASH and VICTOR WANG
_____________

Appeal 2019-006561
Application 15/535,058
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
MICHAEL T. CYGAN, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–9, 11, 13–18, and 20. Claims 10, 12, 19, and 21–25 are canceled.
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(a) (2019). According to Appellant, the real party in interest
is Interdigital Ce Patent Holdings, Paris, France. See Appeal Br. 3.
Appeal 2019-006561
Application 15/535,058

2

STATEMENT OF THE CASE
Invention
Embodiments of the disclosed and claimed invention on appeal relate
“generally to content delivery systems and, more particularly, to a user
interface for generating content recommendations.” Spec. 1.
Representative Claim 1
1. A method for generating a content recommendation, comprising:

obtaining, a ranking of an inclusionary portion of metadata derived
from instances of content for which graphical representations are
presented in a user interface and an exclusionary portion of the
metadata, the metadata ranked based on positions of the graphical
representations in the user interface;

generating a content recommendation based on the ranking of the
inclusionary portions of the metadata and the exclusionary portions
of the metadata; and

modifying the metadata from the instances of content based on
user input.

Appeal Br. 15 (Claims App.) (Disputed dispositive limitation emphasized
regarding anticipation Rejection B of claim 1).
Evidence Relied Upon by the Examiner

Name Reference Date
Polson et al.
(“Polson”)
US 2004/0267742 A1 Dec. 30, 2004
Fadell US 2009/0171812 A1 Jul. 2, 2009
Aarni et al. (“Aarni”) US 2010/0325583 A1 Dec. 23, 2010
Ortiz US 2013/0097101 A1 Apr. 18, 2013
Appeal 2019-006561
Application 15/535,058

3

Table of Rejections2
Rejection Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis
A 1–9, 11, 13–18,
20
101 Eligibility
B 1–4, 11, 13,
15–17, 20
102(a)(1) Aarni
C 2, 3 103 Aarni, Ortiz
D 7, 14, 18 103 Aarni, Fadell
E 8, 9 103 Aarni, Polson
ANALYSIS
Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.

Rejection A Under 35 U.S.C. § 101
USPTO 35 U.S.C. § 101 MPEP Guidance
In January and October of 2019, the U.S. Patent and Trademark
Office (“USPTO”) published revised guidance on the application of
35 U.S.C. § 101.3 We note the USPTO current eligibility guidance is found

2 We note the Examiner does not make a rejection over prior art for claims 5
and 6.
3 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“2019 Revised Guidance”) and USPTO, October 2019
Appeal 2019-006561
Application 15/535,058

4

in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of
Patent Examination Procedure (“MPEP”), and particularly within Sections
2103 through 2106.07(c). Accordingly, all references to the MPEP
throughout this Decision are to the Ninth Edition, Revision 10.2019 (Last
Revised June 2020), unless otherwise indicated.
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or
mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).4

MPEP § 2106, Step 2A, Prong One
The Judicial Exception
Under MPEP § 2106.04(a), the enumerated groupings of abstract
ideas are defined as follows:
(1) Mathematical concepts – mathematical relationships,
mathematical formulas or equations, mathematical
calculations (see MPEP § 2106.04(a)(2), subsection I);
(2) Certain methods of organizing human activity –
fundamental economic principles or practices (including

Update: Subject Matter Eligibility (the “October 2019 Update”). “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” 84 Fed. Reg. at 51; October 2019 Update at 1.
4 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” MPEP § 2106.04(d)II.
Appeal 2019-006561
Application 15/535,058

5

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 MPEP § 2106.04(a)(2), subsection II); and
(3) Mental processes – concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)
(see MPEP § 2106.04(a)(2), subsection III).
In the Final Action, under Step 2A, Prong One, the Examiner cites to,
inter alia, the case authority Electric Power Group, LLC v. Alstom S.A. (830
F.3d 1350 (Fed. Cir. 2016)):
Claims 1, 11 and 16 recite, in part, a method, computing device
and computer program product for obtaining a ranking of
metadata, generating a content recommendation based on the
ranking, and modifying the metadata. These steps relate to the
concept of collecting information, analyzing it, and displaying
certain results of the collection and analysis, which
corresponds to concepts identified as abstract ideas by the
courts, such as in Electric Power Group, or Int. Ventures v. Cap
One Financial.
Final Act. 2–3 (emphasis added).
Appellant disagrees:
Appellant respectfully submits that the present claimed
invention does not fall into any of the above “abstract ideas”
grouping exceptions which would require further analysis, since
the claims do not recite any of mathematical concepts, certain
methods of organizing human activity, and mental processes; as
well as laws of nature and natural phenomena.
Appeal Br. 9.
Appeal 2019-006561
Application 15/535,058

6

The Examiner disagrees with Appellant, and in the Answer (post-
2019 Revised Guidance), determines that the claims recite the judicial
exception of a mental process:
The limitation of obtaining a ranking, as drafted, is a process
that, under its broadest reasonable interpretation, covers
performance of the limitation in the mind but for the recitation
of generic computer components. That is, other than reciting
“by the processor (in claim 11, for example),” nothing in the
claim element precludes the step from practically being
performed in the mind. For example, but for the “by the
processor” language, “obtaining” in the context of this
claim encompasses the user manually ranking the metadata.
Similarly, the limitation of generating a recommendation, as
drafted, is a process that, under its broadest reasonable
interpretation, covers performance of the limitation in the mind
but for the recitation of generic computer components.
Ans. 5 (emphasis added).
Regarding independent claim 1, we agree with the Examiner that a
user could alternatively manually rank and/or modify metadata based upon
user input as a mental process, as defined under MPEP § 2106.04(a)(2),
subsection III.
We note similar limitations of commensurate scope are recited in
independent computing device claim 11, and independent computer program
product claim 16.
Regarding the Examiner’s initial reliance upon Electric Power Group
(830 F.3d 1350) in the Final Action (2–3), we emphasize that 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.”); see also FairWarning IP, LLC v. Iatric
Appeal 2019-006561
Application 15/535,058

7

Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas).
MPEP § 2106.04(a) guides that “[i]f the identified limitation(s) falls
within at least one of the groupings of abstract ideas, it is reasonable to
conclude that the claim recites an abstract idea in Step 2A Prong One.” In
such case, “[t]he claim then requires further analysis in Step 2A Prong Two,
to determine whether any additional elements in the claim integrate the
abstract idea into a practical application, see MPEP § 2106.04(d).” MPEP
2106.04(a).
Because we conclude that all claims 1–9, 11, 13–18, and 20 recite an
abstract idea, as identified above, under Step 2A, Prong One, we proceed to
Step 2A, Prong Two, in which we apply the guidance set forth under MPEP
§ 2106.04(d).5

Step 2A, Prong Two Under MPEP § 2106.04(d),
Integration of the Judicial Exception into a Practical Application
Limitations that are indicative of integration into a practical
application under MPEP § 2106.04(d) 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

5 We note that each dependent claim includes all the limitations of the
claims from which it depends.
Appeal 2019-006561
Application 15/535,058

8

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 including 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 MPEP § 2106.04(d)(I) (Describing Step 2A, Prong Two).

Additional Limitations
Applying the USPTO guidance under MPEP § 2106.04(d), we
consider whether there are additional elements set forth in the claims that
integrate the judicial exception into a practical application.
We note that claims 1–9, 11, 13–18, and 20 recite steps or functions
that are intended to be implemented by a computer and/or a computer
system including one or more processors. Although method claim 1 is silent
regarding any literal mention of a computer or processor, claim 1 recites the
use of a user interface. Independent claim 11 expressly recites: “A
computing device, comprising: at least one processor.” Similarly,
independent computer program product claim 16 recites instructions that are
“executable by a processing unit.”
Appeal 2019-006561
Application 15/535,058

9

We further note the supporting exemplary, non-limiting descriptions
of generic computer components found in the Specification. For example,
see Spec. 7, ll. 21–24:
The content receiver 103 may be any electronic device (such as
a set top box, a desktop computer, a laptop computer, a mobile
device, a smart phone, a cellular telephone, a tablet computer, a
digital media player, and so on) capable of requesting and/or
presenting content received from the computing device 101.
(emphasis added).
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The 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).
Here, we find Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components.
Therefore, we conclude Appellant’s claims 1–9, 11, 13–18, and 20 merely
use a generic programmed computer as a tool to perform an abstract idea.
See MPEP § 2106.05(f).

Extra- or Post-Solution Activities Under MPEP § 2106.05(g)
“[T]he 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 ‘insignificant post[-]solution
activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12 (2010) (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Appeal 2019-006561
Application 15/535,058

10

Here, we conclude that independent claim 1 recites one or more
additional limitations that are extra-solution activities the courts have
determined to be insufficient to transform judicially excepted subject matter
into a patent-eligible application. See MPEP § 2106.05(g).
For example, we conclude that the claim 1 step of “obtaining, a
ranking of an inclusionary portion of metadata” is merely data gathering. Cf.
buySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a
computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”). We note similar
limitations of commensurate scope are recited in independent claims 11 and
16.

MPEP § 2106.05(a) — Improvement to the Functionality of a
Computer or Other Technology or Technical Field.
Applying the guidance under MPEP § 2106.05(a), we consider
whether there are any claimed improvements to the functioning of a
computer or to any other technology or technical field.
In reviewing the record, we find Appellant does not advance any
arguments explaining how the claimed generic computer components aid the
method, the extent to which the computer aids the method, or the
significance of a computer to the performance of the method to improve the
recited computer components. See MPEP § 2106.05(a).
Appellant, who had the benefit of the 2019 Revised Guidance at the
time the Appeal Brief was filed (April 1, 2019), advances no arguments
regarding any claimed improvements to the functioning of a computer or to
any other technology or technical field. Nor has Appellant filed a Reply
Brief in further rebuttal to the Examiner’s responsive explanations in the
Appeal 2019-006561
Application 15/535,058

11

Answer. To the extent that Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are
forfeited.6 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv) (“the failure of appellant to
separately argue claims which appellant has grouped together shall
constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.”).
To the extent that Appellant’s “method for generating a content
recommendation” (claim 1) merely automates a manual (human) approach to
recommending content, we note that 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 1378, 1384 (Fed. Cir. 2019) (quoting Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). And “[u]sing a
computer to accelerate an ineligible mental process does not make that
process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance 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)

6 See In re Google Technology Holdings LLC, No. 2019-1828, 2020 WL
6685948 at * 3 (Fed. Cir. 2020):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458,
464 (1938)) (additional citations omitted). The two scenarios
can have different consequences for challenges raised on
appeal, id. at 733–34, and for that reason, it is worth attending
to which label is the right one in a particular case.
Appeal 2019-006561
Application 15/535,058

12

(“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”).
To the extent that Appellant’s independent method claim 1,
independent computing device claim 11, and independent computer program
product claim 16, are arguendo an improvement over prior-art methods,
computing devices, and mediums we note that an improved abstract idea is
still an abstract idea. See Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 90 (2012) (holding that a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless patent ineligible). See also
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“[A] claim for a new abstract idea is still an abstract idea.”)
(emphasis omitted).
Accordingly, on this record, we conclude that 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). As noted above,
remaining independent claims 11 and 16 recite similar limitations having
commensurate scope.

MPEP § 2106.05(b), 2106.05(c)
Appellant advances no arguments that any of the method claims on
appeal are tied to a particular machine (MPEP § 2106.05(b)), or transform
an article to a different state or thing (MPEP § 2106.05(c)).

Appeal 2019-006561
Application 15/535,058

13

MPEP § 2106.05(e) Meaningful Claim Limitations
The Examiner finds:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional computer elements, which are recited at
a high level of generality, provide conventional computer
functions that do not add meaningful limits to practicing the
abstract idea.
Final Act. 2 (emphasis added).

Appellant disagrees, and contends:
Appellant respectfully submits that the present claimed
invention is clearly directed to a practical application of at least
adaptive streaming over HTTP to the operation of [a] network
equipment method and device for generating content
recommendations in a manner that is controllable by a user.
Accordingly, the claimed invention imposes a meaningful limit
on any possible judicial exception and does not monopolize any
such possible judicial exception, even under Prong Two of the
Step 2A of the revised patent eligibility Guidance.
Appeal Br. 10 (emphasis added).
But Appellant’s claims 1–9, 11, 13–18, and 20 on appeal are silent
regarding any mention of “adaptive streaming over HTTP” or of any
mention of a network.7 Therefore, we find Appellant’s arguments
unavailing.

7 “It is the claims that measure the invention.” See SRI Int’l v. Matsushita
Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc)
(citations omitted); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
(“[T]he name of the game is the claim.”). “We have cautioned against
reading limitations into a claim from the preferred embodiment described in
the specification, even if it is the only embodiment described, absent clear
Appeal 2019-006561
Application 15/535,058

14

Merely adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208,
223 (2014) (The “mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.”).
Because Appellant does not advance any substantive, persuasive
arguments explaining how the judicial exception is applied or used in some
meaningful way, as clarified under MPEP § 2106.05(e), on this record, we
are not persuaded the Examiner erred.
Accordingly, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and
(e)–(h)), we conclude that all claims 1–9, 11, 13–18, and 20 do not integrate
the judicial exception into a practical application.

The Inventive Concept – Step 2B
As set forth under MPEP § 2106.05(d)), only if a claim (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look, under Step 2B, to whether the claim: (3) adds
a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional activity” in the field; 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.

disclaimer in the specification.” In re Am. Acad. of Science Tech Ctr., 367
F.3d 1359, 1369 (Fed. Cir. 2004) (emphasis added).

Appeal 2019-006561
Application 15/535,058

15

Under Step 2B, the Examiner finds:
the additional element of using a processor to perform the
obtaining, generating and modifying steps amounts to no more
than mere instructions to apply the exception using a generic
computer component. Mere instructions to apply an exception
using a generic computer component cannot provide an
inventive concept. The claim is not patent eligible.
Ans. 6 (emphasis added).
Appellant advances no arguments falling under Step 2B to
rebut the Examiner’s finding under MPEP § 2106.05(d). Nor has Appellant
filed a Reply Brief in further rebuttal to the Examiner’s responsive
explanations in the Answer. To the extent that Appellant has not advanced
separate, substantive arguments for particular claims, or other issues, such
arguments are forfeited. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv).
To the extent that Appellant additionally argues that the claims on
appeal do not “monopolize any such possible judicial exception, even under
Prong Two of the Step 2A of the revised patent eligibility Guidance”
(Appeal Brief 10), our reviewing court provides applicable guidance:
“[w]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract”).
For at least the aforementioned reasons, we are not persuaded that
Appellant’s claims do more than simply append well-understood, routine,
and conventional activities previously known to the industry, specified at a
Appeal 2019-006561
Application 15/535,058

16

high level of generality, to the judicial exception. We again emphasize that
an improved abstract idea is still an abstract idea. See Mayo, 566 U.S. at 90;
see also Synopsys, 839 F.3d at 1151 (“[A] claim for a new abstract idea is
still an abstract idea.”) (emphasis omitted).
Moreover, because Appellant does not advance substantive,
persuasive arguments regarding any claimed non-conventional and non-
generic arrangement of known computer components, we find no inventive
concept under Step 2B in any purported ordered combination of these
limitations. We find Appellant’s claims are unlike the claims considered by
the court in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016), in which the court found “an inventive
concept . . . in the non-conventional and non-generic arrangement of known,
conventional pieces.” 827 F.3d at 1350 (emphases added).
In light of the foregoing, we conclude that each of Appellant’s claims
1–9, 11, 13–18, and 20, 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. Therefore, on this record, we sustain
the Examiner’s Rejection A under 35 U.S.C. § 101 of all claims 1–9, 11,
13–18, and 20 on appeal.8

8 Based upon Appellant’s arguments, we decide the appeal of Rejection A
under 35 U.S.C. § 101 of claims 1–9, 11, 13–18, and 20 based upon
representative claim 1. To the extent Appellant has not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are forfeited. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2019-006561
Application 15/535,058

17

Rejection B of Independent Claim 1 Under 35 U.S.C. § 102
Issues: Under 35 U.S.C. § 102(a)(1), did the Examiner err by finding
the cited Aarni reference inherently or expressly discloses or describes the
following claim 1 limitation: “modifying the metadata from the instances of
content based on user input.” (emphasis added).
Regarding the aforementioned disputed limitation of claim 1,
Appellant notes that Aarni:
describes an approach for classification of content to be
rendered on user equipment (see, Aarni at paragraph [0002]). In
Aarni, a user interface 200 presents multiple sliding scales 201
a-f to a client (see, Aarni at paragraph [0031]). The user
indicates a position along a horizontal bar for each sliding scale
201 a-f and submit such selection via a submit button to the
user interface (see, Aarni at paragraph [0031]). Based on the
submitted sliding scale information, a six-dimensional vector is
used to classify content and a recommendation is made to
the user (see, Aarni at paragraphs [0034-0036]).

Contrary to the Examiner's assertion, Aarni does not “modify
the metadata from the instances of content based on user input”
after a recommendation is made to the user. For at least this
reason, claims 1, 11 and 16 are patentable over Aarni.
Appeal Br. 11 (emphasis added).
The Examiner disagrees with Appellant, and further explains the basis
for the rejection. As an initial matter of claim construction, the Examiner
concludes:
First, the claims do not require that modification of the
metadata occurs after a recommendation is made to the user.
That is, even though steps may be listed in a claim in a certain
order, the claim does not require said steps to be performed in a
given order unless there is specific claim language linking the
steps and dictating an order. Were a claim to state, for
Appeal 2019-006561
Application 15/535,058

18

example, ‘performing step A, and then, after performing step A,
performing step B,’ such a claim would contain such a
requirement of order. However, the instant claim language does
not.

Ans. 13 (emphasis added).
We agree with the Examiner’s broader claim construction,9 because
the antecedent basis for the metadata that is modified (in the last step) is
found in the first step of claim 1: “obtaining, a ranking of an inclusionary
portion of metadata . . . .” (emphasis added).
“[A]lthough a method claim necessarily recites the steps of the
method in a particular order, as a general rule the claim is not limited to
performance of the steps in the order recited, unless the claim explicitly or
implicitly requires a specific order.” Baldwin Graphic Sys., Inc. v. Siebert,
Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008).
Applying this guidance here, we conclude that the last step of
“modifying” could alternatively be performed before the recited step of
“generating a content recommendation,” in method claim 1, contrary to
Appellant’s arguments. See Appeal Br. 11.
We also find a preponderance of the evidence supports the Examiner’s
finding of anticipation by Aarni of the claim 1 step of “modifying the
metadata from the instances of content based on user input.” (emphasis
added), because we find Aarni’s Figure 2 (depicting sliders adjustable by the

9 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).

Appeal 2019-006561
Application 15/535,058

19

user) anticipates the disputed last modifying step of claim 1, as further
described in Aarni’s description at paragraph 31.
Accordingly, for essentially the same reasons found by the Examiner,
as further discussed above, we sustain the Examiner’s anticipation Rejection
B of independent claim 1. Associated claims 2–4, 11, 13, 15–17, and 20
(not argued separately) fall with representative claim 1. See 37 C.F.R. §
41.37(c)(1)(iv).
Obviousness Rejections C, D, and E
of all Remaining Dependent Claims

Regarding the obviousness rejections, Appellant contends that the
additionally cited secondary references do not teach or suggest “modifying
the metadata from the instances of content based on user input,” as recited
in the last step of claim 1. See Appeal Br. 12–13. However, we find no
deficiencies in the Examiner’s anticipation Rejection B of claim 1 over
Aarni, for the reasons discussed above.
In light of our affirmance of anticipation Rejection B of independent
claims 1, 11, and 16, supra, we also sustain the Examiner’s obviousness
Rejections C, D, and E of all remaining dependent claims which variously
and ultimately depend therefrom.

CONCLUSIONS
By applying the Director’s 2019 Revised Guidance and October 2019
Update, as now set forth under MPEP Sections 2103 through 2106.07(c), we
conclude that all claims 1–9, 11, 13–18, and 20, as rejected by the Examiner
under 35 U.S.C. § 101, are not directed to patent-eligible subject matter.
Appeal 2019-006561
Application 15/535,058

20

The Examiner did not err in rejecting claims 1–4, 11, 13, 15–17, and
20 as being anticipated under 35 U.S.C. § 102(a)(1) over Aarni.
The Examiner did not err in rejecting claims 2, 3, 7–9, 14, and 18 as
being obvious under 35 U.S.C. § 103, over the cited combinations of
references.

DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9, 11,
13–18, 20
101 Eligibility 1–9, 11,
13–18, 20

1–4, 11, 13,
15–17, 20
102(a)(1) Aarni 1–4, 11, 13,
15–17, 20

2, 3 103 Aarni, Ortiz 2, 3
7, 14, 18 103 Aarni, Fadell 7, 14, 18
8, 9 103 Aarni, Polson 8, 9
Overall
Outcome
1–9, 11,
13–18, 20

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