Adobe Inc.

Patent Trials and Appeals Board

Jun 23, 2020

14566181 - (D) (P.T.A.B. Jun. 23, 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.
14/566,181 12/10/2014 Rishiraj Saha Roy P4592-US 4633
108982 7590 06/23/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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 RISHIRAJ SAHA ROY, J. GUNA PRASAAD,
AISHWARYA PADMAKUMAR and
PONNURANGAM KUMARAGURU
___________

Appeal 2019-006255
Application 14/566,181
Technology Center 3600
____________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR. and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1–20 under
35 U.S.C. § 134(a). Appeal Brief 3. Claims 1, 10 and 17 are independent.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed May 1, 2019), the Final
Action (mailed March 28, 2018) and the Answer (mailed June 25, 2019), for
the respective details.

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Adobe Incorporated as the real party in
interest. Appeal Brief 3.
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Introduction
According to Appellant, the invention is directed to “[t]echniques for
linguistic personalization of messages for targeted campaigns.”
Specification ¶ 2.
Representative Claim3
Claim 1 is reproduced below for reference (bracketed step lettering
added with italicizing):
1. A computer-implemented method for linguistically
personalizing a textual message for one or more segments of a
targeted campaign, the method comprising:
[a] extracting, by a computing device, word dependencies
between keywords and modifiers in a segment-specific text and a
product-specific text;
[b] building, by the computing device, language models for the
segment-specific text and the product-specific text;
[c] extracting, by the computing device, the modifiers from the
product-specific text, the extracted modifiers being associated with a
desired sentiment;
[d] identifying, by the computing device, transformation points
in a message skeleton, the identified transformation points indicating
the keywords that are candidates for modification; and
[e] inserting, by the computing device, one or more of the
extracted modifiers to modify one or more of the identified keywords
in the message skeleton, the inserting being effective to personalize
the message skeleton to produce the personalized textual message for
the segment associated with the segment-specific text.

3 For the § 101 rejection, Appellant argues claims 1–20 as a group, focusing
on subject matter common to independent claims 1, 10, and 17. See Appeal
Brief 24. We select independent claim 1 as the representative claim. See
37 C.F.R. § 41.37(c)(1)(iv); see also Appeal Brief 16–17.

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Rejection on Appeal4
Claims 1–20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final
Action 3–6.

PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice 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.”).

4 The 35 U.S.C. § 112(b) rejection of claims 1–20 was withdrawn by the
Examiner. Answer 3.
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”).
Having said that, the 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.”).
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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
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
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 (January 7, 2019)
(“2019 Revised Guidance”).5 “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

5 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.pdf).
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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”).6
2019 Revised Guidance 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 at 52–56.

ANALYSIS
The Examiner determines claims 1–20 are patent ineligible under
35 U.S.C. § 101. See Final Action 3; see Alice, 573 U.S. at 217 (describing
the two-step framework “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as

6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
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our own. We add the following primarily for emphasis and clarification
with respect to the Revised Guidance.

Step 2A—Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
The Examiner determines in the Answer, after the publishing of the
2019 Revised Guidance, “the claims are directed to the ‘abstract idea
of editing text’ and includes ‘collecting and analyzing information in order
to produce a desirable information-based result.’” Answer 4 (citing Final
Action 3).
The Specification discloses:
In an example implementation, a request is transmitted by
a client to a service provider to linguistically personalize a textual
message for one or more segments of a targeted campaign. The
service provider extracts dependencies between keywords and
modifiers, from one or more segment-specific texts and a
product-specific text, to build language models for the one or
more segment specific texts and the product specific text. The
service provider extracts modifiers with a desired sentiment from
the product specific text and identifies transformation points in a
message skeleton. Then the service provider inserts one or more
of the extracted modifiers to modify one or more keywords in the
message skeleton to create a personalized message for each
target segment of the targeted marketing campaign, and
communicates the personalized messages to the client.
Specification ¶ 3.
The message skeleton is a basic version of the advertising
message, typically without modifiers, that will be personalized
for each segment. The message skeleton is evaluated to identify
transformation points where keywords may be modified by the
insertion of segment-specific modifiers. Extracted modifiers are
then evaluated for insertion at the transformation points. If a
modifier, which sufficiently expresses the desired sentiment in
the language model of a segment, is found, the modifier is
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inserted to modify a keyword to personalize the message
skeleton for the target segment. Personalized messages produced
in this manner are then used by the marketer for communications
to customers in the segment of the targeted campaign.
Specification ¶ 17.
Claim 1’s preamble recites a “computer-implemented method for
linguistically personalizing a textual message for one or more segments of a
targeted campaign.” The body of claim 1 then recites extracting terms from a
segment specific text to be supplanted by desired sentiment terms using
language models in limitations [a]–[c]. Claim 1 further recites identifying
transformation points in a message and inserting the desired sentiment terms
to personalize the message in limitations [d]–[e].
These steps comprise commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations). Thus, the
claim recites the abstract idea of “certain methods of organizing human
activity.” See 2019 Revised Guidance, Section I (Groupings of Abstract
Ideas).
Furthermore, our reviewing court has found claims to be directed to
abstract ideas when they recited similar subject matter. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014) (holding that claim
“describe[ing] only the abstract idea of showing an advertisement before
delivering free content” is patent ineligible); see also buySAFE, Inc. v.
Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that concept of
“creating a contractual relationship—a ‘transaction performance guaranty’”
is an abstract idea). Therefore, we conclude the claims recite an abstract
idea pursuant to Step 2A, Prong One, of the 2019 Revised Guidance. See
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2019 Revised Guidance, Section III(A)(1) (Prong One: Evaluate Whether
the Claim Recites a Judicial Exception).

Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception.” 2019 Revised Guidance,
Section III(A)(2). We note that a “claim that integrates a judicial exception
into a practical application will 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.” 2019 Revised Guidance, Section III(A)(2).
We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See 2019 Revised Guidance at 55 nn. 25, 27–32.
Appellant argues the steps in claim 1, “are beyond generally linking
the use of the judicial exception to a particular technological environment,
describing instead a specific and detailed method of personalizing textual
message that enables advertisers to generate advertising content and use the
content to target consumers based on desired demographic characteristics.”
Appeal Brief 22 (citing Specification ¶ 15). Appellant contends, “the claims
describe a method that no longer require[s] advertisers to manually produce
multiple versions of the same advertising message, with each version
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appealing to a different audience segment.” Appeal Brief 22 (citing
Specification ¶ 13).
We do not find Appellant’s arguments persuasive because any alleged
improvement to the efficiency, speed, and accuracy, arise out of the
conventional advantages of using the claimed computing device as a tool,
and not a particular improvement to the computing device itself (see
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“[M]erely adding computer functionality to increase
the speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea”)); see 2019 Revised Guidance at 55; see also
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019)
(“This invention makes the trader faster and more efficient, not the
computer. This is not a technical solution to a technical problem.”).
Further, as the Federal Circuit has explained, a “claim for a new
abstract idea is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming the technique
claimed was “[g]roundbreaking, innovative, or even brilliant,” that would
not be enough for the claimed abstract idea to be patent eligible. See Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Claim 1’s method does not recite any improvement to the claimed
computing device instead the method only uses the computing device to
improve advertisers’ ability to produce multiple versions of the same
advertising message for a different audience segment. See Appeal Brief 22.
Additionally, we detect no additional element (or combination of
elements) recited in Appellant’s representative claim 1 that integrates the
judicial exception into a practical application. See 2019 Revised Guidance,
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Section III(A)(2). For example, Appellant’s claimed additional element
(e.g., computing device) does not: (1) improve the functioning of a
computer or other technology; (2) is not applied with any particular machine
(except for a generic computer device); (3) does not effect a transformation
of a particular article to a different state; and (4) is not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP §§ 2106.05(a)–(c), (e)–(h).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application).

Step 2B identified in the 2019 Revised Guidance
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
Appellant contends, “even assuming arguendo that claim 1 is directed
to a judicial exception, which it is not, the claims are nonetheless patent
eligible” because the “elements or combination of elements are not well-
understood, routine, or conventional activity in the field. Instead, claim 1 is
directed to a specific method of efficiently personalizing textual information
to one or more segments as part of a targeted advertising campaign.”
Appeal Brief 23 (emphasis added). Appellant argues, “the elements or
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combination of elements in claim 1 enables advertisers to target a wide
range of customers with varying demographic profiles without the need to
manually produce multiple versions of an advertising message. Such an
improvement [is] not well-understood, routine, or conventional activity in
the field.” Appeal Brief 24 (emphasis added). “[M]any considerations in
Step 2A need not be reevaluated in Step 2B.” 2019 Revised Guidance at 56.
As we stated above, Appellant’s alleged improvement to the advertising
process does not confer patent eligibility on the claimed abstract idea. See
Intellectual Ventures I LLC, 792 F.3d at 1370. In Step 2B, we need to
consider whether an additional or combination of elements, “[a]dds a
specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present” or “simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.”
2019 Revised Guidance at 56.
In Bascom, our reviewing court found that while the claims of the
patent were directed to an abstract idea, the patentee alleged an “inventive
concept can be found in the ordered combination of the claim limitations
that transform the abstract idea of filtering content into a particular, practical
application of that abstract idea.” Bascom Global Internet Services, Inc., v.
AT&T Mobility LLC 827 F.3d 1341, 1352 (Fed. Cir. 2016). In particular, the
patent in Bascom claimed “a technology-based solution (not an abstract-
idea-based solution implemented with generic technical components in a
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conventional way) to filter content on the Internet that overcomes existing
problems with other Internet filtering systems.” Bascom at 1351.
Claim 1 is distinguishable, as it recites an abstract-idea-based
solution, that is, a method of providing personalized advertisement
implemented with a generic technical component (e.g., computing device),
in a conventional way. See generally Specification. Therefore, we are not
persuaded that ordered combination of limitations in representative claim 1
provides an inventive concept, and we find the claims simply appends a
well-understood, routine and conventional activity to the judicial exception.
See 2019 Revised Guidance at 56; see also Appeal Brief 24.
Accordingly, we conclude claims 1–20 are directed to commercial or
legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations). As such, the claim recites the abstract idea of “certain methods of
organizing human activity” identified in the 2019 Revised Guidance; and
thus, an abstract idea with the claims failing to recite limitations that amount
to significantly more than the abstract idea itself. We sustain the Examiner’s
§ 101 rejection of claims 1–20.

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CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED