Adobe Inc.

Patent Trials and Appeals Board

Jul 7, 2020

14630342 - (D) (P.T.A.B. Jul. 7, 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.
14/630,342 02/24/2015 Michael A. Marth P5240-US-ORG1 1032
108982 7590 07/07/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
ANDREI, RADU
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07/07/2020 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. MARTH and KEN BEATON
Appeal 2019-005649
Application 14/630,342
Technology Center 3600
Before JOHNNY A. KUMAR, JENNIFER S. BISK, and JOYCE CRAIG,
Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL1

1 Throughout this Decision we have considered the Specification filed
February 24, 2015 (“Spec.”), the Non-Final Office Action mailed December
3, 2018 (“Non-Final Act.”), the Appeal Brief filed April 22, 2019 (“Appeal
Br.”), the Examiner’s Answer mailed May 13, 2019 (“Ans.”), and the Reply
Brief filed July 15, 2019 (“Reply Br.”).
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 5–7, and 22–35. See Non-Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to managing content for marketing, including
content creation, deployment collaboration, activity stream, and task
management. Spec. ¶ 4. Claims 1, 24, and 32 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter (bracketed
numbers added):
1. In a digital medium environment, a system comprising one or
more modules implemented by a processing system and
computer readable storage medium of at least one computing
device to perform operations including:
[1] generating a plurality of digital content that includes:
[a] metadata that describes an image editing operation of
a plurality of image editing operations used to create respective
digital content of the plurality of digital content; and
[b] usage tracking monitors;
[2] receiving deployment data from the usage tracking
monitors of the plurality of digital content, the deployment data
describing user interaction with the respective digital content of
the plurality of digital content;
[3] generating feedback data describing inclusion of the
plurality of image editing operations in metadata of the plurality
of digital content and the user interaction with the respective
digital content of the plurality of digital content based on the
deployment data; and

2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Adobe Inc. Appeal
Br. 2.
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[4] outputting the feedback data.
Appeal Br. 59 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Walker US 2004/0174434 A1 Sept. 9, 2004
Baskaran US 2010/0146269 A1 June 10, 2010
Ogishi US 2013/0290840 A1 Oct. 31, 2013
O’Donnell US 9,396,279 B1 July 19, 2016
Dudas WO 2008/033840 A2 Mar. 20, 2008
REJECTIONS
Claims 24–31 are rejected under 35 U.S.C. § 112(a), for failing to
comply with the written description requirement.3 Non-Final Act. 7–8.
Claims 1–3, 5–7, and 22–35 are rejected under 35 U.S.C. § 101
because the claimed invention is not directed to patent eligible subject
matter. Non-Final Act. 4–7.
Claims 1–3, 5–7, 22–28, and 31–35 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dudas, Baskaran, O’Donnell, and
Ogishi. Non-Final Act. 8–14.

3 In the Final Action, independent claims 1 and 32 and their dependent
claims (2–7, 22, 23, and 33–35) are also rejected under 35 U.S.C. § 112(a)
based on the limitation “feedback data describing inclusion of the plurality
of image editing operations.” Final Act. 7–8. The Examiner, however,
withdrew the rejection as to this limitation, leaving only independent claim
24 and its dependent claims (claims 25–31) rejected as lacking written
description. Ans. 4.
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Claims 29 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dudas, Baskaran, O’Donnell, Ogishi, and Walker. Non-
Final Act. 14–16.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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).
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 of Claims 24–31 under 35 U.S.C. § 112
The Examiner rejects dependent claims 24–31 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement
because the term “ranking . . . the plurality of operations” as recited in claim
24 “has no support in the specification, drawings[,] or initial set of claims.”
Final Act. 8. According to the Examiner, “[t]he specification discloses
ranking metadata and ranking content,” but “does not disclose ranking
operations.” Id.
Appellant disagrees, arguing that the term “ranking . . . the plurality of
operations” is sufficiently described by the Specification. Appeal Br. 11–12
(citing Spec. ¶¶ 86–91); Reply Br. 2–3. Specifically, Appellant points to
paragraph 86, which discloses that metadata describes characteristics of
content “and/or creation of the content, including . . . image editing
operations performed” and paragraph 90, which discloses that ratings may
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be based on metadata. Spec. ¶¶ 86, 90. According to Appellant, the
Specification’s disclosure “that metadata is ranked and that the metadata can
describe image editing operations performed” equates to “express support”
of “ranking . . . the plurality of operations.” Appeal Br. 12.
The Examiner does not agree, explaining that “ranking metadata could
refer to any of the metadata constitutive elements” and, therefore, “ranking
metadata, whatever it entails, cannot be equated with ranking operations as
defined by Appellant’s specification.” Ans. 4. In addition, the Examiner
explains that “the specification is silent about how the ranking of the
metadata, or of the operations for this matter, is performed” and, thus, does
not “reasonably convey to one skilled in the relevant art that the inventor(s),
at the time the application was filed, had possession of the claimed
invention.” Id.
We agree with Appellant that the Specification describes the claimed
invention in sufficient detail that one skilled in the art can reasonably
conclude that the inventor had possession of “ranking . . . the plurality of
operations” at the time of filing. See Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010). Although we agree with the
Examiner that ranking metadata could entail ranking types of metadata other
than image editing operations, we also agree with Appellant that a person of
ordinary skill in the art would understand that ranking metadata could
include ranking primarily or solely based on image editing operations.
Moreover, the claim language is broad enough that a person of ordinary skill
in the art would understand that any method of ranking could be used to
implement this feature. Therefore, the lack of specificity on this
implementation detail would not result in a person of ordinary skill in the art
concluding that the inventor does not have possession of the limitation.
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We, therefore, do not sustain the Examiner’s rejection of claims 24–
31 under U.S.C. § 112(a).
Rejection of Claims 1–3, 5–7, and 22–35 under 35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
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Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
For the § 101 rejections, Appellant argues claims 1–16 and 21–24
together. See Appeal Br. 8–14. As permitted by 37 C.F.R. § 41.37, we
decide the appeal for this rejection based on claim 1. See 37 C.F.R.
§41.37(c)(1)(iv). Noting claims 1 and 21 recite systems and claim 13 recites
a method and, therefore, fall within the process category of § 101, we turn to
the Examiner’s § 101 rejection.
The Judicial Exception—Abstract Idea
The Examiner determined that the claims “are directed to receiving
deployment data, generating feedback, ranking operations and outputting the
feedback data” similar to steps found to be an abstract idea in Electric
Power. Final Act. 4 (citing Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d
1350 (Fed. Cir. 2016)). The Examiner also states that “each of the foregoing
activities” of claims 1, 13, and 21 “could have been performed by a human
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being, or by a ‘human analog’ mentally or manually, i.e. with pen and
paper.” Id. at 5.
Between the mailing of the Non-Final Office Action and the Answer,
the Office issued the Revised Guidance. In response to this guidance, the
Examiner added that “[t]he limitations, as drafted, constitute a process that,
under its broadest reasonable interpretation, covers performance of the
limitations in the mind, but for the recitation of generic computer
components (‘by the at least one computing device).’” Ans. 7. The
Examiner, therefore, explains that the claims falls within the category of
“Mental Processes—Concepts Performed in the Human Mind (e.g.
observation, evaluation, judgment, opinion)” and, therefore, recites an
abstract idea. Id.; see Revised Guidance, 84 Fed. Reg. at 53. For the
reasons explained below, we agree that the claims recite an abstract idea.
According to the Specification, the invention overcomes problems
related to having to select content for inclusion in marketing activities “from
scratch.” Spec. ¶ 3. This often requires marketing professionals to create
new marketing material by guessing why other marketing activities have
been successful, “which could be complicated, time consuming, and may not
be accurate.” Id. The Specification describes “[c]ontent and deployment
collaboration techniques,” which use a “content creation service” and a
“content deployment service,” so that deployment data may be tracked and
reused in future marketing activities. Id. ¶ 5. Providing data to be used in
creating marketing material falls within “advertising, marketing, or sales
activities.” Revised Guidance, 84 Fed. Reg. at 52.
As quoted and enumerated above, claim 1 includes four main
limitations. These limitations recite, in part, the following steps: generating
content including metadata and usage tracking (limitation [1]) and
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generating feedback data based on deployment data (limitation [3]). Appeal
Br. 59 (Claims App.). Except for the recitation that the generated content is
digital, under their broadest reasonable interpretation, these limitations ([1]
and [3]) could be performed in the mind or with pencil and paper. For
example, the Specification describes usage tracking as “determin[ing] a
number of times [the content is] accessed by potential[] customers, how and
when accessed, [and] identities of who accessed the content, and so forth.”
Spec. ¶ 43. This type of determination can be done in the mind or using
pencil and paper. The same is true of metadata, which describes
characteristics of the content (id. ¶ 42) and feedback data (id. ¶ 54). Similar
claims have been found ineligible by the Federal Circuit. For example, the
Federal Circuit continues to “treat[ ] analyzing information by steps people
go through in their minds, . . . without more, as essentially mental processes
within the abstract-idea category.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1146–47 (Fed. Cir. 2016) (quoting Electric Power
Group, 830 F.3d at 1354).
When claimed in a manner similar to the claims here, gathering and
analyzing information using conventional techniques has been determined to
be an abstract idea. In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
612–13 (Fed. Cir. 2016). Also, more recently, our reviewing court has also
concluded that some acts of collecting, analyzing, manipulating, and
displaying data are patent ineligible. Univ. of Fl. Research Found., Inc. v.
General Electric Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019) (citing
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017); Electric Power Group, 830 F.3d at 1353–54).
Accordingly, we conclude claim 1 recites concepts performed in the
human mind as identified in the Revised Guidance, and thus, an abstract
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idea.4 Revised Guidance, 84 Fed. Reg. at 52, 53 (listing “[c]ertain methods
of organizing human activity . . . commercial or legal interactions” and
“[m]ental processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion” each as one of the “enumerated
groupings of abstract ideas”).
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
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. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, the claims recite the additional elements of “processing system
and computer readable storage medium of at least one computing device,”
“digital content,” receiving deployment data (limitation [1]), and “outputting

4 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[a]n abstract
idea can generally be described at different levels of abstraction. . . . The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.” Id. Moreover, merely combining several abstract
ideas does not render the combination any less abstract. 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 Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).
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the feedback data” (limitation [4]). Appeal Br. 59 (Claims App.).
Considering the claims as a whole, the additional elements do not apply or
use the abstract idea in a meaningful way such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. The
Supreme Court guides that the “prohibition against patenting abstract ideas
‘cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment’ or [by] adding ‘insignificant
postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting Diamond v.
Diehr, 450 U.S. 175, 191–92 (1981)).
The Specification describes each of these elements as generic
components. For example, the Specification states that “[c]omputing
devices that are used to implement the content creation service 102, content
deployment service 104, and the client device 106 are configurable in a
variety of ways,” ranging from “full resource devices with substantial
memory and processor resources (e.g., personal computers, game consoles)
to a low-resource device with limited memory and/or processing resources
(e.g., mobile devices).” Spec. ¶ 48; see also id. ¶¶ 153–166 (describing the
system in terms of conventional computer hardware and software). The
Specification also describes “a display device (e.g., a monitor or projector).”
Id. ¶ 157; see also id. ¶ 154 (“The example computing device 3502 as
illustrated includes . . . one or more I/O interface 3508 that are
communicatively coupled, one to another.”). The recited “digital content”
simply limits the abstract idea to a particular technological environment.
See MPEP 2106.05(e). Moreover, we determine limitations [1] and [4]
constitute insignificant extra-solution activity of receiving and displaying
data. See MPEP 2106.05(g).

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Appellant’s arguments have not persuaded us claim 1 is “directed to”
a patent-eligible concept. Appellant also argues that in analyzing patent
eligibility, the Examiner oversimplified the claims. Appeal Br. 18–21
(citing McRO). According to Appellant, similar to McRO, “the specific
language of claim 1 preempts preemption of all processes for collecting
information.” Id. at 21. This argument is not persuasive. An examiner can
describe an abstract idea at different levels of generality without affecting
the patent-eligibility analysis. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240–41 (Fed. Cir. 2016) (“An abstract idea can generally be
described at different levels of abstraction. . . . The Board’s slight revision of
its abstract idea analysis does not impact the patentability analysis.”). That
is the case here. Regardless of the level of generality used to describe the
abstract idea recited in claim 1, the result is the same—claim 1 recites an
abstract idea. Cf. Accenture Glob. Servs., GmbH v. Guidewire Software,
Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (“Although not as broad as the
district court’s abstract idea of organizing data, it is nonetheless an abstract
concept.”).
Moreover, rather than preemption, the Federal Circuit instructs that
the Alice two-step analysis is the test for whether claims are statutory.
“While 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).
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
Appellant also argues that the claims are directed to “a technological
improvement that clearly distinguishes the claim from an abstract idea.”
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Appeal Br. 17. To support this argument, Appellant cites to each of the
limitations of claim 1. Id. According to Appellant, the limitations of claim
1 “improve[] computer-related technology by providing recitation of specific
functionality regarding the operation of the suggestion protocol, and the
various inventive features associated therewith,” which “is simply not
possible to be obtained by a human without the improvements in the
computer-related technology recited in the claims.” Id. at 18. Appellant
adds that the claims are similar to those found patentable in Core Wireless
because they “improve efficiency of a computing device by providing users
with feedback data describing deployment of digital content and operations
used to create the deployed digital content.” Appeal Br. 22 (citing Core
Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir.
2018)).
We disagree that the availability of data to users describes an
improvement to a user interface for displaying that data. The fact that users
may find data displayed on a user interface to be useful has no bearing on
whether there has been a technological improvement to the user interface
itself. Appellant does not point to, and we do not see, any disclosure in the
Specification that describes improving the user interface itself, but instead
describes what data should be displayed by a conventional user interface.
See Spec. ¶ 44 (“Content creators, in one such instance, receive this data to
determine which of their content has been successfully employed as part of
marketing activities and use this information in the creation of future
content.”).
In contrast to the claims at issue here, in Core Wireless, the claims
recited an improved interface for a mobile device that displayed a summary
of applications in unlaunched states so that users could quickly navigate to
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desired applications from the start up menu to find data of interest unlike
known devices that required a user to switch views many times and drill
through many layers to find the right data or functionality. Core Wireless,
880 F.3d at 1362–63. The interface displayed “a limited list of common
functions and commonly accessed stored data” that were accessible directly
from the main menu “rather than using conventional user interface methods
to display a generic index on a computer.” Id. at 1363.
Here, claim 1 recites generating feedback and displaying that data. In
other words, the display itself functions generically; it displays data. What
data is displayed and how it is arranged is described by the claims at issue,
but not the mechanism of how that data is displayed.
We find persuasive and applicable the decision in Trading
Technologies International v. IBG. There, the court held:
The claims of the ’999 patent do not improve the
functioning of the computer, make it operate more efficiently, or
solve any technological problem. Instead, they recite a
purportedly new arrangement of generic information that assists
traders in processing information more quickly. . . . We conclude
that the claims are directed to the abstract idea of graphing bids
and offers to assist a trader to make an order.

Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019).
Like the claims in Electric Power Group, the claims here purport to advance
a “process of gathering and analyzing information of a specified content,
then displaying the results, and not any particular assertedly inventive
technology for performing those functions.” Electric Power Grp., 830 F.3d
at 1354.
Finally, Appellant argues that the claims are integrated into a practical
application because they are directed to “addressing a digitally-rooted
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challenge that is particular to the Internet, . . . enabling marketing
professional to know which of their marketing activities has been
successfully or unsuccessfully employed and why.” Appeal Br. 24–27
(citing DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1258 (Fed. Cir.
2014)).
In DDR Holdings, the Court evaluated the eligibility of claims
“address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol, would
be instantly transported away from a host's website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem that
had no “pre-Internet analog.” Id. at 1258. The Court cautioned, however,
“that not all claims purporting to address Internet-centric challenges are
eligible for patent.” Id. For example, in DDR Holdings the Court
distinguished the patent-eligible claims at issue from claims found patent-
ineligible in Ultramercial. See id. at 1258–59 (citing Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)). As noted there, the
Ultramercial claims were “directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–16).
Nevertheless, those claims were patent ineligible because they “merely
recite[d] the abstract idea of ‘offering media content in exchange for viewing
an advertisement,’ along with ‘routine additional steps such as updating an
activity log, requiring a request from the consumer to view the ad,
restrictions on public access, and use of the Internet.”’ Id.
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Appellant’s asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a] sponsor
message;” and “if the sponsor message is an interactive message, presenting
at least one query to the consumer and allowing said consumer access to said
media product after receiving a response to said at least one query.” 772
F.3d at 712. Similarly, Appellant’s asserted claims recite collecting data and
outputting certain of that data depending on content. This is the type of
activity found ineligible in Ultramercial. The invention as a whole does not
solve problems specifically arising in some aspect of computer technology,
nor is it solving an Internet centric problem, but rather the computer in the
instant claims is used as a mechanism to improve efficiency. See
FairWarning, 839 F.3d at 1095 (citing Bancorp Services, LLC v. Sun Life
Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F.
App’x 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the claims
purport to accelerate the process of finding errant files and to reduce error,
we have held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer ‘do[] not materially alter the
patent eligibility of the claimed subject matter.’” (alteration in original)
(citation omitted)).
Accordingly, even in combination with all the other recited elements,
the addition of “a processing system and computer readable storage medium
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of at least one computing device,” “digital content,” receiving deployment
data (limitation [1]), and “outputting the feedback data” (limitation [4]) does
not integrate the abstract idea into a practical application because it does not
impose any meaningful limits on practicing the abstract idea. For these
reasons, we determine that claim 1 does not integrate the recited abstract
idea into a practical application.
Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner’s finding that an additional element (or
combination of elements) is WURC activity must be supported with a
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum5).
Whether the additional elements (of “processing system and computer
readable storage medium of at least one computing device,” “digital
content,” receiving deployment data (limitation [1]), and “outputting the
feedback data” (limitation [4])) are WURC activity is a question of fact. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether

5 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
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something is well-understood, routine, and conventional to a skilled artisan
. . . is a factual determination.”).
On the record before us, Appellant has not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field, whether the
limitations are considered individually or as an ordered combination (see
MPEP § 2106.05(d)). Appellant does not point to any particular claimed
element, or combination of elements, that does not qualify as WURC, but
instead points to the “recited features” of the claim as being an inventive
concept. See Reply Br. 4–5.
In fact, as explained by the Examiner (Final Act. 9–10), Appellant’s
Specification demonstrates the WURC “processing system and computer
readable storage medium of at least one computing device,” “digital
content,” receiving deployment data (limitation [1]), and “outputting the
feedback data” (limitation [4]). Spec. ¶¶ 153–166.
For these reasons, we conclude that the claims, considered as a whole,
do not include an inventive concept.
Therefore, we sustain the Examiner’s § 101 rejection of independent
claims 1, 24, and 32. For the reasons discussed above, we also sustain the
Examiner’s § 101 rejection of dependent claims 2–5, 7–9, 11–15, and 22–27,
for which Appellant relies on the same arguments made with respect to the
independent claims. Appeal Br. 30.
Rejection of Claims 1–3, 5–7, 22–28, and 31–35 under 35 U.S.C. § 103
Claims 1–3, 5–7, 22, 23, and 32–35
The Examiner rejects claims 1–3, 5–7, 22, 23, and 32–35 as obvious
over the combination of Dudas, Baskaran, O’Donnell, and Ogishi. Final
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Act. 8–14. Specifically, the Examiner relies on Dudas as teaching the
majority of the limitations of independent claims 1 and 32 (Final Act. 8–9),
but relies on Baskaran “to illustrate the functionality of tracking content in
the same or similar context,” (id. at 9) on O’Donnell “to illustrate the
functionality of an operation used to create content in the same or similar
context” (id. at 10) and on Ogishi “to illustrate the functionality of image
editing and user interaction feedback data in the same or similar context.”
(id. at 11).
Appellant argues that O’Donnell does not teach or suggest
“generating feedback data describing inclusion of image editing operations
in metadata of digital content and inclusion of user interaction with the
digital content based on deployment data” (the “generating feedback”
limitation) as recited in claims 1 and 32. Appeal Br. 31–34 (claim 1), 40–42
(claim 32); Reply Br. 5. According to Appellant, “Ogishi fails to mention
the inclusion of the claimed ‘deployment data,’” but instead “describes
handwritten data updated by edited content data within a comment area.” Id.
at 32–33, 41.
The Examiner responds that it is the combination of Dudas,
O’Donnell, and Ogishi that discloses the generating feedback limitation.
Ans. 11–13. Specifically, the Examiner relies on Dudas’s disclosure of
usage tracking monitors. Id. at 12 (citing Dudas, Fig. 4, ¶¶ 62, 79). The
Examiner relies on O’Donnell’s disclosure of metadata that describes an
image editing operation. Id. at 13 (citing O’Donnell, Figs. 4A, 4B, 10B,
6:65–7:22, 11:37–52, 12:51–60). And the Examiner relies on Ogishi for
image editing and feedback data. Id. at 11 (citing Ogishi, Fig. 4, ¶¶ 7–9, 42,
56–58, 85). Together the Examiner combines teachings from the three
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references to teach the entirety of the generating feedback limitation. Id. at
11–13.
We do not agree with Appellant’s contention that “the Examiner
admits that [the generating feedback limitation] are not disclosed by Dudas,
Baskaran, and O’Donnell.” Reply Br. 5. Appellant’s arguments do not
persuade us of Examiner error because they attack the references
individually, while the Examiner relies on the combined disclosures in the
references to reject the independent claims. See Ans. 11–13. Where a
rejection rests on the combined disclosures in the references, an appellant
cannot establish nonobviousness by attacking the references individually.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here the
Examiner relies on the teachings of three references—Dudas, O’Donnell,
and Ogishi—but Appellant addresses only Ogishi. See Appeal Br. 31–34,
40–42; Reply Br. 5. We, therefore, are not persuaded of error in the
Examiner’s finding that the combined references render obvious the
generating feedback limitation.
Appellant argues that the references does not teach or suggest
“receiving deployment data from usage tracking monitors of the plurality of
digital content, the deployment data describing user interaction with
respective digital content” (the “receiving limitation”). Appeal Br. 34–37
(claim 1), 42–45 (claim 32). According to Appellant, [t]here is no indication
in Dudas of tracking deployment of data after generating digital content.”
Id. at 35, 42–43. Appellant adds that “O’Donnell stores markup data to edit
a webpage prior to publication.” Id. at 36, 44.
In response, the Examiner explains that both Dudas and Baskaran
disclose this limitation. Ans. 13–14. In particular, the Examiner points to
Baskaran’s disclosure of usage tracking monitors. Id. at 14 (citing Baskaran,
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Fig. 2, ¶ 50). Because Appellant does not address the disclosure of Baskaran
with respect to this limitation, we are not persuaded of error in the
Examiner’s finding that Baskaran teaches or suggests the receiving
limitation. See Reply Br. 5–6 (discussing only Dudas with respect to this
limitation).
Appellant argues that the references do not teach or suggest
“generating a plurality of digital content that includes usage tracking
monitors” (the “generating content limitation”). Appeal Br. 37–39 (claim 1),
45–47 (claim 32). According to Appellant, “there is no indication in
Baskaran of tracking user interactions with digital content by a usage
tracking monitor included in the digital content.” Id. at 37–38, 45. We do
not find this argument persuasive because the claim language is not as
limited as alleged by Appellant. We find that Baskaran teaches an activity
tracking module that “monitors and tracks the activities of the user 206 on
the electronic content.” Baskaran ¶ 50. No matter how the activity tracking
module is stored—either separate from or somehow contained within the
electronic content it monitors and tracks—it qualifies as digital content.
Thus, generating Baskaran’s activity tracking module satisfies the generating
content limitation. In other words, the generating content limitation does not
define the storage implementation details of digital content, but instead
requires the generation, in some form, of usage tracking and metadata be
generated. This reading of the claim language is consistent with the
Specification, which does not define how the claimed usage tracking
monitor is stored in relation to any other digital content, but instead simply
states that content is “associated with a tracking monitor.” Spec. ¶¶ 43, 124.
Based on this understanding of the language, we are not persuaded of error
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in the Examiner’s finding that Baskaran teaches or suggests the generating
content limitation.
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claims 1 and 32 as obvious over the combination of Dudas,
Baskaran, O’Donnell, and Ogishi. Appellant does not make any additional
arguments for claims 2, 3, 5–7, 22, 23, and 33–35, which depend from
claims 1 and 32. Appeal Br. 39, 47. Accordingly, we are not persuaded of
error in the Examiner’s rejection of claims 2, 3, 5–7, 22, 23, and 33–35 as
obvious over the combination of Dudas, Baskaran, O’Donnell, and Ogishi.
Claims 24–28 and 31
Independent claim 24 differs slightly from independent claims 1 and
31. It is similar in that it includes the generating content and receiving
limitations, but instead of the generating feedback limitation, claim 24
recites “ranking, by the at least one computing device, the plurality of
operations used to create the plurality of digital content based on the
received deployment data” (the “ranking limitation”). Appeal Br. 61
(Claims App.).
Appellant reiterates the arguments for the generating content and
receiving limitations made with respect to claims 1 and 32. Appeal Br. 48–
51 (receiving limitation), 54–56 (the generating content limitation). As
discussed above, we do not find those arguments persuasive.
In addition, Appellant argues that the references do not teach or
suggest the ranking limitation. Appeal Br. 51–54. According to Appellant,
Dudas does not disclose “digital content based on the received deployment
data” and O’Donnell limits markup data to those made “prior to
publication.” Id. at 52–53.
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In response, the Examiner explains that it is the combination of Dudas
and O’Donnell that teaches this limitation. Ans. 18–19.
As discussed above, Appellant’s arguments that attack the references
individually, while the Examiner relies on the combined disclosures in the
references do not persuade us of error. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Here, the Examiner relies on the teachings of
the combined disclosures of Dudas and O’Donnell, but Appellant addresses
only the two references independently. See Appeal Br. 51–54; Reply Br. 7–
8. We, therefore, are not persuaded of error in the Examiner’s finding that
the combined references render obvious the ranking limitation.
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claim 24 as obvious over the combination of Dudas, Baskaran,
O’Donnell, and Ogishi. Appellant does not make any additional arguments
for claims 25–28 and 31, which depend from claim 24. Appeal Br. 56.
Accordingly, we are not persuaded of error in the Examiner’s rejection of
claims 24–28 and 31 as obvious over the combination of Dudas, Baskaran,
O’Donnell, and Ogishi.
Claims 29 and 30
The Examiner rejects dependent claims 29 and 30 over Dudas,
Baskaran, O’Donnell, Ogishi, and Walker. Final Act. 14–16. Claims 29 and
30 depend from claim 24. Appellant does not make additional arguments for
claims 29 and 30. Appeal Br. 57. Accordingly, we are not persuaded of
error in the Examiner’s rejection of claims 29 and 30 as obvious over the
combination of Dudas, Baskaran, O’Donnell, Ogishi, and Walker.
CONCLUSION
We reverse the rejection of claims 24–31 under 35 U.S.C. § 112(a).
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We sustain the rejection of claims 1–3, 5–7, and 22–35 under
35 U.S.C. § 101.
We sustain the rejection of claims –3, 5–7, and 22–35 under 35 U.S.C.
§ 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s rejection of claims 1–3, 5–7,
and 22–35.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis/
Reference(s)
Affirmed Reversed
24–31 112(a) 24–31
1–3, 5–7, 22–
35
101 Eligibility 1–3, 5–7,
22–35

1–3, 5–7, 22–
28, 31–35
103(a) Dudas, Baskaran,
O’Donnell, Ogishi
1–3, 5–7,
22–28, 31–
35

29, 30 103(a) Dudas, Baskaran,
O’Donnell, Ogishi,
Walker
29, 30
Overall
Outcome
1–3, 5–7,
22–35

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) (1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED