Aaron Fish

Patent Trials and Appeals Board

Sep 24, 2020

12949575 - (D) (P.T.A.B. Sep. 24, 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.
12/949,575 11/18/2010 Aaron Fish VTC009-USNP 6031
94289 7590 09/24/2020
Valuetech Consulting Inc.
310-6411 Buswell St
Richmond, BRITISH COLUMBIA V6Y 2G5
CANADA
EXAMINER
YESILDAG, LAURA G
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
taran.grey@gmail.com
valuetechuspto@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON FISH
Appeal 2020-001555
Application 12/949,575
Technology Center 2800
Before ERIC S. FRAHM, CARL L. SILVERMAN, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–6, 9–14, 16–20, 24–28, and 32.
See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Accordios Worldwide
Enterprises Inc. Appeal Br. 3.
Appeal 2020-001555
Application 12/949,575

2
CLAIMED SUBJECT MATTER
The claims are directed to a digital marketing and revenue generation
method and system. Spec. 2. “Digital showroom,” as recited in the claims,
means “online user/provider digital interfaces and exchange apparatus that
enable providers to display goods, services and survey questions; and enable
users to interact with as well as select goods and services, and input
information and or survey answers.” Spec. 7. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of obtaining dual-purpose interactions from
workers with each of a series of multiple, exclusive digital
showrooms before granting benefits to the workers, comprising:
receiving in a data store, from a first provider via a first
web browser, a configuration of a first digital showroom
including a first logo and data representing a first group of prizes,
which is offered by the first provider;
receiving in the data store, from a second provider via a
second web browser, a configuration of a second digital
showroom including a second logo and data representing a
second group of prizes, which is offered by the second provider;
displaying on a first page on a plurality of communication
devices, by a computing system connected by a network to said
plurality of devices and the data store, the first digital showroom
including the first logo and the first group of prizes offered by
the first provider;
displaying on a second page on said plurality of devices,
by the system, the second digital showroom including the second
logo and the second group of prizes offered by the second
provider;
receiving, by the system, via inputs to said plurality of
devices, from each of a plurality of workers:
a selection of one prize from the first group of prizes
displayed in the first digital showroom; and
a selection of one prize from the second group of prizes
displayed in the second digital showroom;
Appeal 2020-001555
Application 12/949,575

3
said selections being at least part of a body of work received by
the system from each worker;
defining, by the system, a selected prize package for each
worker comprising said selections;
granting, by the system, to each of the plurality of workers, a
benefit comprising a chance to win his or her selected prize package;
providing to the first provider on a first additional
communication device connected to the network, a first portion of
each body of work, said first portion including the selection of the
prize from the first group and excluding the selection of the prize from
the second group;
providing to the second provider on a second additional
communication device connected to the network, a second portion of
each body of work, said second portion including the selection of the
prize from the second group and excluding the selection of the prize
from the first group;
each said selection serving to define both its corresponding
selected prize package and a consumer preference data portion of the
body of work; and
selecting, by the system, at least one winner from the plurality
of workers, said winner winning his or her selected prize package.
Appeal Br. 8 (Claims Appendix).
REJECTION
Claims 1, 3–6, 9–14, 16–20, 24–28, and 32 are rejected under
35 U.S.C. § 101 because the claimed invention is directed to patent-
ineligible subject matter. Final Act. 2.
ANALYSIS
Appellant argues the Examiner’s rejection of the pending claims
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter is in
error. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
37 C.F.R. § 41.37(c)(1)(iv). Appellant argues claims 1, 3–6, 9–14, 16–20,
Appeal 2020-001555
Application 12/949,575

4
24–28, and 32 as a group. Appeal Br. 5. Given our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1, 3–6,
9–14, 16–20, 24–28, and 32 based on representative claim 1.
Principles of Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
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
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);
Appeal 2020-001555
Application 12/949,575

5
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 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
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 part
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
Appeal 2020-001555
Application 12/949,575

6
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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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 (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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
Appeal 2020-001555
Application 12/949,575

7
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
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” 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Step 1
Claim 1, as a method claim, falls within the process category of § 101.
See 2019 Revised Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 recites “certain methods of
organizing human activity,” which is an abstract idea. Ans. 3–5; Final Act.
3. Appellant presents no arguments challenging the Examiner’s conclusion
that claim 1 recites “certain methods of organizing human activity,” which is
an abstract idea. See Appeal Br. 5; Reply Br. 2.
We agree with the Examiner’s determination that claim 1 is fairly
characterized as advertising and marketing activities, and managing
relationships and transactions between people, which fall into the certain
method of organizing human activity category of abstract ideas. See 84 Fed.

practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
Appeal 2020-001555
Application 12/949,575

8
Reg. at 52; Ans. 3–5. The preamble of claim 1 recites “obtaining dual-
purpose interactions from workers with each of a series of multiple,
exclusive digital showrooms before granting benefits to the workers.”
Appeal Br. 8 (Claims App.). The Specification describes that “[t]he present
invention is directed to a digital marketing and revenue generation method
and system.” Spec. 2. The Specification describes “exchanges of work for
items and benefits” and “exchanges of work for prizes.” Spec. 3. Claim 1
reflects such description by receiving configurations of digital showrooms
from providers; displaying digital showrooms, which display a selection of
prizes; receiving selections of prizes from workers; granting workers
chances to win prizes; providing providers with prize selections; and
selecting a winner from the plurality of workers. See Appeal Br. 8–9 (claim
1). In the Appeal Brief, Appellant acknowledges that “[i]n the claimed
invention, the problem is solved by requiring interaction from the consumer,
defined in the claim as a worker, with each provider of online commercial
content before a benefit is granted.” Appeal Br. 5. For at least these reasons,
we agree with the Examiner that claim 1 involves advertising and marketing
activities, and managing relationships and transactions between people,
which are “certain methods of organizing human activity,” and thus an
abstract idea.
Appellant does not challenge the Examiner’s determination that claim
recites “certain methods of organizing activity.” Rather, Appellant argues
that “without the computing environment, there is no invention, so whatever
it is that can be done on paper is outside of the claimed invention.” Appeal
Br. 5.
Appeal 2020-001555
Application 12/949,575

9
To the extent Appellant argues that claim 1 does not recite a “mental
process” that can be performed in the human mind or with pen and paper, we
disagree. Steps that may be performed in the mind, even if recited as being
performed on a computer, are mental processes. See Intellectual Ventures
ILLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (noting, in
holding that the claim recites an abstract idea, that “with 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”); Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) (holding that a computer-
implemented method for “anonymous loan shopping” was an abstract idea
because it could be “performed by humans without a computer”); Versata
Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person's mind.”); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use
of “computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible).
Here, at least the limitations “defining . . . a selected prize package for
each worker comprising said selections, “granting . . . to each of the plurality
of workers, a benefit comprising a chance to win his or her selected prize
package,” and “selecting . . . at least one winner from the plurality of
workers, said winner winning his or her selected prize package” can be
Appeal 2020-001555
Application 12/949,575

10
performed in the human mind.4 See 2019 Revised Guidance, 84 Fed. Reg. at
52, 53 nn.14–15 (listing mental processes as including observation,
evaluation, judgment, and opinion); see also Elec. Power Grp. LLC v.
Alstom S.A, 830 F.3d 1350 (Fed. Cir. 2016) (“we have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” 830 F.3d at 1354 (citations omitted)).
Because we agree with the Examiner that claim 1 recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We determine whether the recited judicial exception is integrated into
a practical application of the judicial exception by: (a) identifying whether
there are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Revised Guidance at 55 n.24. In claim 1, the additional elements include the
limitations “data store,” “web browser,” “communication devices,”

4 In our “mental process” analysis, the “receiving,” “displaying,” and
“providing” steps, as recited in claim 1, amount to mere data gathering,
which is insignificant extra-solution activity. See 2019 Revised Guidance, 84
Fed. Reg. at 55; MPEP § 2106.05(g).
Appeal 2020-001555
Application 12/949,575

11
“computing system,” “network,” “inputs to said plurality of devices,” and
“digital showroom.”
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See 2019 Revised Guidance.
The Examiner determined that none of the additional limitations
integrates the abstract idea into a practical application because the additional
elements are generic computer components that do not provide “any
practical assurance that the process is significantly more than a drafting
effort designed to monopolize the abstract idea itself.” Final Act. 5. We
agree with the Examiner. See Ans. 6–7 (citing Spec. 12–13).
Appellant does not argue that the additional elements are not generic
computer components. Rather, Appellant argues that the claimed invention
“represents” a practical application because it requires providers to configure
and customize their own specific digital showroom, the separate display of
each showroom, the interaction of the workers with each showroom without
omitting any, and each selection to serve the dual purpose of being a prize
choice and consumer preference data. Appeal Br. 5.
Appellant’s argument is not persuasive. The claim simply includes
instructions to implement an abstract idea on a computer and “does no more
Appeal 2020-001555
Application 12/949,575

12
than generally link the use of a judicial exception to a particular
technological environment or field of use.” 2019 Revised Guidance, 84 Fed.
Reg. at 55.
Appellant next argues that the computing environment, “i.e.,
machine,” is essential because “without the machine in the claims, there is
no solution.” Appeal Br. 6 (citing SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319 (Fed. Cir. 2010)).
We are not persuaded the claims here are comparable to those in
SiRF, where the Federal Circuit determined that the claimed GPS receiver
was a machine that was integral to each of the claims at issue. 601 F.3d at
1331. In SiRF, the goal of the claims was to determine the position of the
GPS receiver. Id. In other words, the claims of the patents at issue were
determined patent eligible not simply because they required a GPS receiver,
but because they were directed to improved techniques for computing the
position of the GPS receiver. No such technological improvement is evident
in the claimed invention. Unlike the situation in SiRF, Appellant does not
identify any improvement to GPS technology or any other computer
technology. Instead, Appellant’s claims merely invoke the use of a generic
computer components for receiving, displaying, providing, and selecting
information to associate with a digital showroom.
Appellant next argues that claim 1 “improves digital brand
engagement, which is a technical field because it necessarily involves digital
devices.” Appeal Br. 7.
Claim 1 does not recite an improvement for electronic devices
because receiving, displaying, defining, granting, providing, and selecting
information to associate with a digital showroom, as in claim 1, “does not
Appeal 2020-001555
Application 12/949,575

13
improve the functioning of the computer, make it operate more efficiently,
or solve any technological problem.” Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d 1378, 1385 (Fed. Cir. 2019). Rather, the claim simply “includes
instructions to implement an abstract idea on a computer” and “does no
more than generally link the use of a judicial exception to a particular
technological environment or field of use.” 2019 Revised Guidance, 84 Fed.
Reg. at 55. We agree with the Examiner that the invention’s use of digital
devices does not equate to improving the technology or the digital device
structures themselves. Ans. 9–10.
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in these cases.
Claim 1 as a whole merely uses instructions to implement the abstract idea
on a computer or, alternatively, merely uses a computer as a tool to perform
the abstract idea. Here, the additional limitation(s) do not integrate the
judicial exception into a practical application. More particularly, the claim
does not recite (i) an improvement to the functionality of a computer or other
technology or technical field; (ii) a “particular machine” to apply or use the
judicial exception; (iii) a particular transformation of an article to a different
thing or state; or (iv) any other meaningful limitation. See 84 Fed. Reg. at
55. Rather, claim 1 recites an abstract ideas as identified in Step 2A(i),
supra, and none of the limitations integrates the judicial exception into a
practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Appeal 2020-001555
Application 12/949,575

14
Step 2B — “Inventive Concept” or “Significantly More”
If a claim is directed to a patent-ineligible concept, as we conclude
above, we proceed to the “inventive concept” step. For Step 2B we must
“look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
We find no such features in claim 1. Pages 12 through 15 of
Appellant’s Specification describe computer systems upon which
embodiments of the present invention may be implemented. See Spec. 12–
15. Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant’s
Specification, as cited above.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving data,
displaying data, sending data, and storing data in a database. See buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
Appeal 2020-001555
Application 12/949,575

15
receives and sends the information over a network—with no further
specification—is not even arguably inventive”); In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data,
extracts classification information from the received data, and stores the
digital images insufficient to add an inventive concept); Alice, 573 U.S. at
225-26 (receiving, storing, sending information over networks insufficient to
add an inventive concept). Courts have recognized that receiving or
transmitting data over a network, in a manner similar to that recited in claim
1, is well-understood, routine, and conventional. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (sending messages
over a network); buySAFE, 765 F.3d at 1355 (computer receives and sends
information over a network).
We conclude claim 1 does not have an inventive concept because the
claim, in essence, merely recites various computer-based elements along
with no more than mere instructions to implement the identified abstract idea
using the computer-based elements.
Because claim 1 is directed to an abstract idea, without significantly
more, we sustain the Examiner's § 101 rejection of independent claim 1 and
grouped claims 3–6, 9–14, 16–20, 24–28, and 32, not argued separately with
particularity.

DECISION
We affirm the Examiner’s decision rejecting claims 1, 3–6, 9–14, 16–
20, 24–28, and 32.
Appeal 2020-001555
Application 12/949,575

16
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–6, 9–14,
16–20, 24–28,
32
101 Eligibility

1, 3–6, 9–14,
16–20, 24–28,
32

TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED