Yahoo Holdings, Inc.

Patent Trials and Appeals Board

Oct 26, 2020

13872436 - (D) (P.T.A.B. Oct. 26, 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.
13/872,436 04/29/2013 Enrique A. Munoz Torres Y09509US00 1035
123510 7590 10/26/2020
Cooper Legal Group LLC
6505 Rockside Road Suite 330
Independence, OH 44131
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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):
docketing@cooperlegalgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ENRIQUE A. MUNOZ TORRES and MARISSA A. MAYER
____________

Appeal 2020-000926
Application 13/872,436
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 25–48. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed February 21, 2019) and Reply Brief (“Reply Br.,” filed November 18,
2019), and the Examiner’s Answer (“Ans.,” mailed September 17, 2019),
Advisory Action (“Adv. Act.,” mailed December 13, 2018), and Final Office
Action (“Final Act.,” mailed August 23, 2018). Appellant identifies Oath
Inc. as the real party in interest (Appeal Br. 3).
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CLAIMED INVENTION
The claimed invention “relates generally to data processing systems”
and, more particularly, to “a system and method for booking an online
advertising campaign” (Spec. ¶ 1).
Claims 25, 32, and 41 are the independent claims on appeal.
Claim 25, reproduced below with bracketed notations added, is illustrative
of the claimed subject matter:
25. A system, comprising:
a non-transitory medium configured to store program
logic; and
one or more processors in data communication with the
non-transitory medium and configured to execute the stored
program logic to perform operations comprising:
[(a)] receiving content to be delivered, at least in
part, to a user in association with an advertising campaign
of an advertiser;
[(b)] adapting a sequence of respective content
items for display, one after another, as the respective
content items would appear down a web page viewed on
at least two different types of user devices to which at least
some content may be communicated during the
advertising campaign of the advertiser;
[(c)] modifying the content to include the
sequence of respective content items to generate modified
content;
[(d)] selecting one or more pre-generated
advertisements, associated with the advertising campaign
of the advertiser, for presentation to the advertiser for
review and acceptance by the advertiser for the advertising
campaign of the advertiser;
[(e)] determining a format corresponding to at
least one destination environment of the one or more pre-
generated advertisements based upon the sequence of
respective content items;
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[(f)] transforming the one or more pre-generated
advertisements, based upon the format corresponding to
the at least one destination environment, to generate one
or more transformed advertisements conforming in
appearance and content with text and graphics selected to
complement the sequence of respective content items;
[(g)] generating an offer to initiate the advertising
campaign, the offer comprising:
context information illustrative of the
modified content, the one or more transformed
advertisements, pricing information for the
advertising campaign of the advertiser for
presentation to the advertiser for review and
acceptance by the advertiser, and
an initiation actuator selectable by the
advertiser to accept the offer with the one or more
transformed advertisements and the pricing
information for the advertising campaign;
[(h)] communicating the offer to a communication
device of the advertiser;
[(i)] receiving an offer acceptance message from
the communication device of the advertiser, the offer
acceptance message indicating selection of the initiation
actuator by the advertiser; and
[(j)] in response to receiving the offer acceptance
message, booking the advertising campaign according to
terms of the offer.
REJECTION
Claims 25–48 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Appellant argues claims 25–48 as a group (Appeal Br. 26–48).
We select independent claim 25 as representative. The remaining claims
stand or fall with claim 25. See 37 C.F.R. §41.37(c)(1)(iv).
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Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “creating tailored content (offer
and modified content) for advertisers and initiating a contractual
relationship,” i.e., to an abstract idea similar to other concepts that courts
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have held abstract (Final Act. 2–4). The Examiner also determined that the
claims do not include additional elements or a combination of elements
sufficient to amount to significantly more than the abstract idea itself (id.
at 4–7).
After the Final Office Action was mailed, the U.S. Patent and
Trademark Office (the “USPTO”) published revised guidance on January 7,
2019 for use by USPTO personnel in evaluating subject matter eligibility
under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised
Guidance”). 2 That guidance revised the USPTO’s examination procedure
with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
The 2019 Revised Guidance, by its terms, applies to all applications,
and to all patents resulting from applications, filed before, on, or after
January 7, 2019. Id.3,

3 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded, as an initial matter, that the Examiner
overgeneralized claim 25 as directed to “creating tailored content (offer and
modified content) for advertisers and initiating a contractual relationship,” or
that the Examiner otherwise oversimplified the concept to which the claim is
directed without taking the actual claim language into account (Appeal
Br. 26–29; see also Reply Br. 2–4). Instead, Examiner’s characterization of
the claim is, in our view, fully consistent with the Specification, as described
below, including the claim language.
Appellant asserts that a “portion of claim 25 — comprising 313 words
in total — has been rejected by the examiner as presenting the following
‘abstract idea’: Creating tailored content (offer and modified content) for
advertisers and initiating a contractual relationship” (Appeal Br. 28); and
Appellant charges that the rejection exhibits an “oversimplification —
bordering on mass disregard — of the actual limitations of claim 25” (id.).
Appellant’s argument is not persuasive at least because there is no
requirement that an examiner’s formulation of the abstract idea must copy
the claim language. That claim 25 includes more words than the phrase the
Examiner used to articulate the abstract idea, and that the Examiner, thus,
articulates the abstract idea at a higher level of abstraction than would
Appellant is, accordingly, an insufficient basis to persuasively argue that the
claim language has been mischaracterized or that the Examiner has failed to
consider the claim as a whole. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at
different levels of abstraction. As the Board has done, the claimed abstract
idea could be described as generating menus on a computer, or generating a
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second menu from a first menu and sending the second menu to another
location. It could be described in other ways, including, as indicated in the
specification, taking orders from restaurant customers on a computer.”).
We also decline to find error here to the extent Appellant argues that
the § 101 rejection cannot be sustained because the Examiner has not
addressed the patent eligibility of each of the dependent claims separately
(Appeal Br. 41–44; see also Reply Br. 6). There is no dispute that
examiners are to evaluate the patent eligibility of each claim individually.
But, consideration of each claim individually does not require a separate
written analysis for each individual claim. Moreover, we agree with the
Examiner that the dependent claims are directed to the same abstract idea as
the independent claims, albeit at differing levels of specificity (Final Act. 6–
7). Cf. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that when all claims are
directed to the same abstract idea, “addressing each claim of the asserted
patents [is] unnecessary.”).
Appellant’s argument that the Examiner erred in determining that
claim 25 is directed to an abstract idea is similarly unavailing (Appeal
Br. 44–46). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
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tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 25 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “SYSTEM AND METHOD FOR
BOOKING AN ONLINE ADVERTISING CAMPAIGN,” and discloses that
the application relates, in particular, to “a system and method for booking an
online advertising campaign” (Spec. ¶ 1). The Specification describes that
“[i]nitiating an advertising campaign conventionally has required a
substantial commitment and engagement from an advertiser” (id. ¶ 18), and
that this has been especially true for new advertisers who have not
previously advertised through the online provider (id.), or who are not
experienced in creating advertising campaigns (id. ¶ 20).
Online providers have emphasized educating prospective advertisers,
for example, through “help content” available online and through human
interaction with sales representatives; these providers also have designed
user interfaces, which are easy for advertisers to access and use (id. ¶ 23).
Yet, although these approaches have been helpful, the Specification
describes that “they do not change the fact that many advertisers need a
significant level of engagement before developing the confidence to initiate
a new campaign” (id.).
The claimed invention purportedly simplifies the process of
“onboarding advertisers for new products” by providing a system and
method that allow an advertiser to initiate an advertising campaign with a
single click on a webpage or on an electronic mail message (Spec. ¶¶ 5, 25).4

4 The Specification states that “[o]nboarding includes engaging an
advertiser with a particular advertising product or products, developing an
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In accordance with the method, advertising creatives, taken from existing
campaigns, are automatically transformed into a proposal suitable for a
particular new product and a particular prospective advertiser (id.), with the
end product of this transformation being a “ready-to-go” advertising
campaign that can be provided automatically in an offer, e.g., an email
message, to the advertiser (id.). The advertiser can choose to accept the
offer or instead make modifications; then, upon acceptance of the offer, e.g.,
by clicking a link in the email, the system books the campaign for the
advertiser (id.).
Consistent with this disclosure, claim 25 recites a system comprising,
inter alia, one or more processors configured to execute stored program
logic to perform operations comprising: (1) “receiving content to be
delivered . . . to a user in association with an advertising campaign of an
advertiser” (step (a)); (2) adapting a sequence of content items for display in
list form, one after another, down a webpage, and modifying the content to
include the sequence of content items, i.e.,
adapting a sequence of respective content items for
display, one after another, as the respective content items would
appear down a web page viewed on at least two different types
of user devices to which at least some content may be
communicated during the advertising campaign of the advertiser;
[and]
modifying the content to include the sequence of
respective content items to generate modified content

advertising campaign, selecting creatives and establishing parameters such
as pricing, budget, and timing”; “[o]nboarding may also include booking the
advertising campaign by initiating appropriate records in an account
database and beginning to serve advertisements with an ad server” (Spec.
¶ 25).
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(steps (b) and (c)); (3) selecting one or more pre-generated advertisements,
and formatting the advertisements to conform the content and appearance of
the advertisements to a particular destination platform, i.e.,
selecting one or more pre-generated advertisements,
associated with the advertising campaign of the advertiser, for
presentation to the advertiser for review and acceptance by the
advertiser for the advertising campaign of the advertiser;
determining a format corresponding to at least one
destination environment of the one or more pre-generated
advertisements based upon the sequence of respective content
items; [and]
transforming the one or more pre-generated
advertisements, based upon the format corresponding to the at
least one destination environment, to generate one or more
transformed advertisements conforming in appearance and
content with text and graphics selected to complement the
sequence of respective content items
(steps (d), (e), and (f)); (4) generating an offer to initiate the advertising
campaign, and communicating the offer to the advertiser, i.e.,
generating an offer to initiate the advertising campaign,
the offer comprising:
context information illustrative of the modified
content, the one or more transformed advertisements,
pricing information for the advertising campaign of the
advertiser for presentation to the advertiser for review and
acceptance by the advertiser, and
an initiation actuator selectable by the advertiser to
accept the offer with the one or more transformed
advertisements and the pricing information for the
advertising campaign; [and]
communicating the offer to a communication device of the
advertiser
(steps (g) and (h)); and (5) receiving an offer acceptance from the advertiser
and, in response, booking the advertising campaign in accordance with the
terms of the offer, i.e., “receiving an offer acceptance message from the
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communication device of the advertiser, the offer acceptance message
indicating selection of the initiation actuator by the advertiser” and “in
response to receiving the offer acceptance message, booking the advertising
campaign according to terms of the offer” (steps (i) and (j)).
Appellant argues that the Examiner erred in rejecting claim 25 under
35 U.S.C. § 101 at least because claim 25 does not recite subject matter that
falls within any of the enumerated groupings of abstract ideas set forth in the
2019 Revised Guidance (Appeal Br. 44–46). Yet, we agree with the
Examiner that the claim limitations, when given their broadest reasonable
interpretation, recite “creating tailored content . . . for advertisers and
initiating a contractual relationship,” i.e., a commercial interaction, which is
a method of organizing human activity and, therefore, an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52.
We also are not persuaded by Appellant’s argument that claim 25
integrates the recited abstract idea into a practical application (Appeal
Br. 46–48). The 2019 Revised Guidance references MANUAL OF
PATENT EXAMINING PROCEDURE, Ninth Edition (rev. Jan 2018)
(available at https://mpep.uspto.gov/RDMS/MPEP/E9_R-08.2017.)
§ 2106.05(a)–(c) and (e) in non-exhaustively listing considerations
indicative that an additional element or combination of elements may have
integrated the recited judicial exception into a practical application. 2019
Revised Guidance, 84 Fed. Reg. at 55. For example, an additional element
may have integrated the judicial exception into a practical application if the
additional element (1) reflects an improvement in the functioning of a
computer or an improvement to other technology or technical field;
(2) implements the judicial exception with, or uses the judicial exception
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with, a particular machine or manufacture integral to the claim; or (3) effects
a transformation or reduction of an article to a different state or thing. Id.
However, merely including instructions to implement an abstract idea on a
computer, or merely using a computer as a tool to perform an abstract idea;
adding insignificant extra-solution activity to the judicial exception; or only
generally linking the use of the judicial exception to a particular
technological environment or field are not sufficient to integrate the judicial
exception into a practical application. Id.
Appellant asserts here that “the present claims provide for a technique
that is dynamic and simplifies the process of onboarding advertisers”
(Appeal Br. 47). And, quoting paragraph 26 of the Specification, Appellant
explains that, rather than focusing solely on making it simpler for
prospective advertisers to develop their own advertising creatives, this new
approach proactively and automatically transforms information, including
advertising creatives taken from existing campaigns, into a proposed ready-
to-go advertising campaign that advertisers can choose to accept, as
proposed, or make modifications (id.).
Appellant asserts, “[t]herefore, the claims are eligible at Prong Two of
revised Step 2A” (id. at 48). But, we fail to see how, and Appellant does not
explain adequately how, claim 25 integrates the abstract idea into a
“practical application,” as that phrase is used in the 2019 Revised Guidance.
We find no indication, for example, in the Specification that the
operations recited in claim 25 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, or invoke
any allegedly inventive programming. We also find no indication in the
Specification that the claimed invention effects a transformation or reduction
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of a particular article to a different state or thing. Nor do we find anything
of record that attributes an improvement in technology and/or a technical
field to the claimed invention. Instead, claim 25 appears to involve, at best,
merely including instructions to implement an abstract idea on a computer,
or merely using a computer as a tool to perform an abstract idea, which, as
described above, is not sufficient to integrate the recited abstract idea into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55. See
also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
Responding to the Examiner’s Answer, Appellant asserts in its Reply
Brief that claim 25 is not directed to an abstract idea because, like the patent
eligible claims in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.,
880 F.3d 1356 (2018), claim 25 improves the display and functionality of
presenting webpages on particular types of computing devices (Reply Br. 6–
8). The facts of Core Wireless, however, are readily distinguishable.
There, the claims were directed to “an improved user interface for
electronic devices, particularly those with small screens.” Core Wireless,
880 F.3d at 1363. The specification described that “prior art interfaces had
many deficits relating to the efficient functioning of the computer, requiring
a user ‘to scroll around and switch views many times to find the right
data/functionality,”’ and disclosed that the claimed invention improved the
“efficiency of using the electronic device by bringing together ‘a limited list
of common functions and commonly accessed stored data,’ which can be
accessed directly from the main menu.” Id. The specification also disclosed
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that “[t]he speed of a user’s navigation through various views and windows”
was improved in that the user was saved “from navigating to the required
application, opening it up, and then navigating within that application to
enable the data of interest to be seen or a function of interest to be activated”
— disclosure that the Federal Circuit concluded “clearly indicates that the
claims are directed to an improvement in the functioning of computers,
particularly those with small screens.” Id.
Appellant maintains here that the “claim elements improve the
functionality of the[ ] different types of computing devices for displaying
web pages by formatting and transforming content within a web page based
upon technical features of a particular destination device that is to render the
web page” (Appeal Br. 7). But, we find no indication in the Specification,
nor does Appellant direct us to any indication, that claim 25 is directed to an
improved interface analogous to the one in Core Wireless that provides an
improvement in computer functionality, or that claim 25 uses anything other
than conventional interface methods to format content for display on a
display device. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–43
(Fed. Cir. 2016) (noting a user interface that generates and displays
selectable user interface elements from other selectable user interface
elements does not transform an otherwise abstract idea into eligible subject
matter); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed.
Cir. 2016) (noting use of a generic computer element like a user interface is
not patent-eligible subject matter); Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1342 (2017) (noting a user interface that
provides little more than an unspecified set of rules for displaying and
organizing elements does not recite eligible subject matter).
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We conclude, for the reasons outlined above, that claim 25 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim, i.e., a “non-transitory medium”;
“one or more processors in communication with the non-transitory
medium”; and a “communication device of the advertiser,” are no more than
generic computer components used as tools to perform the recited abstract
idea (see, e.g., Spec. ¶¶ 47, 57, 58). As such, they do not integrate the
abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–
24 (“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 25 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 25 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 25 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
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The Examiner determined here, and we agree, that the only elements
recited in claim 25 beyond the abstract idea are “a non-transitory medium”;
“one or more processors in data communication with the non-transitory
medium”; and “a communication device of the advertiser,” i.e., generic
computer components used to perform generic computer functions (Ans. 3–
4) — a determination amply supported by, and fully consistent with the
Specification (see, e.g., Spec. ¶¶ 47, 57, 58).5 Appellant cannot reasonably
maintain that there is inadequate factual support for the Examiner’s
determination that the operation of these components is well-understood,
routine, or conventional, where, as here, there is nothing in the Specification
to indicate that the operations recited in claim 25 require any specialized
hardware or inventive computer components or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions, e.g., receiving, storing, and processing
information. Indeed, the Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out

5 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
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conventional processes, with no alteration of computer functionality.”
Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J.,
concurring) (internal citations omitted); see also BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) (“BSG Tech does
not argue that other, non-abstract features of the claimed inventions, alone or
in combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 25 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 25, and claims 26–48, which fall
with claim 25.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
25–48 101 Eligibility 25–48
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED