Andrew E. Levi et al.

Patent Trials and Appeals Board

Feb 3, 2020

14573634 - (D) (P.T.A.B. Feb. 3, 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.
14/573,634 12/17/2014 Andrew E. Levi 17593.0151 5993
101839 7590 02/03/2020
SCHULTZ & ASSOCIATES, P.C.
5400 LBJ FREEWAY
SUITE 1200
DALLAS, TX 75240
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
02/03/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW E. LEVI and BRADLEY W. BAUER
____________

Appeal 2018-004471
Application 14/573,634
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
CYNTHIA L. MURPHY.

Opinion Dissenting filed by Administrative Patent Judge
TARA L. HUTCHINGS.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals the Examiner’s rejection of claims 1–14, 31,
and 32 under 35 U.S.C. § 101. We REVERSE.2

1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the
inventor or all of the joint inventors”). “The real party in interest is Blue
Calypso, LLC.” (Appeal Br. 2.)
2 We have jurisdiction over this appeal under 35 U.S.C. §§ 6(b) and 134(a).
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BACKGROUND
The Appellant provides a method “for providing direct advertising
between peer-to-peer communication devices,” namely between the
communication device of a “subscriber” and the communication device of a
“recipient” who has a relationship with this subscriber. (Spec. ¶ 57.)3
With the Appellant’s method, the subscriber agrees to promote the
products/services of an advertiser, and, per this agreement, the subscriber’s
communications to his/her peer recipients include advertisements promoting
these products/services. (See Spec. ¶¶ 67–72.) When a communication
from the subscriber reaches a recipient’s device, “[an] advertisement is
displayed, played, or confirmed” by the recipient. (Id. ¶ 74.) If the
advertisement includes a “link” to the advertiser’s website, the recipient may
“click on” this link at the end of the communication session. (Id.)
For each advertisement (e.g., endorsement) sent, software residing on
the subscriber’s device “creates a unique identifier” containing “a hash of
three separate codes,” namely an “[e]ndorsement code,” a “[s]ource code,”
and “contact code.” (Spec. ¶ 109.) In other words, there is a hashing of an
endorsement code, a source code, and a contact code to form a unique
identifier that is included in the communication sent to the recipient’s
device. According to the Appellant, “without the unique identifier,” there
would “not be a way for the destination communication device to identify,
provide, or store information related to the endorsement, source, or contact.”
(Appeal Br. 27.)

3 “Examples of peer-to-peer communication devices include cellular phones,
personal digital assistants (PDA), personal computers, instant messaging
devices, and audio devices.” (Spec. ¶ 56.)
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ILLUSTRATIVE CLAIM
1. A method for targeted distribution of promotional
information relating to one or more product or service
promotions by one or more advertisers, the distribution being
first to one or more source communication devices associated
respectively with one or more qualified subscribers and
thereafter from the one or more source communication devices
to one or more destination communication devices associated
respectively with one or more recipients having relationships
with a qualified subscriber from whom the information was
received, wherein an intermediary between the one or more
advertisers and the one or more qualified subscribers comprises
a server, the method comprising the steps of:
a. obtaining, at the intermediary, from at least one
advertiser, a first profile including demographic data desired by
the advertiser;
b. obtaining, at the intermediary, from at least one
source communication device, a second profile including
demographic data relating to a subscriber;
c. deriving, at the intermediary, a match condition
between the first profile and the second profile, thereby
qualifying the subscriber for the receipt of the promotional
information and determining a matched advertiser;
d. upon qualifying the subscriber, communicating
from the intermediary to a source communication device
associated with the qualified subscriber, first product or service
information relating to one or more promotions by the matched
advertiser;
e. after communicating the first product or service
information to the source communication device associated
with the qualified subscriber, receiving, at the intermediary, an
express selection by the qualified subscriber of at least one
selected promotion of the one or more promotions;
f. subsequent to the step of receiving the express
selection, transmitting from the intermediary to the source
communication device, second information for creating a
content communication, related to the at least one selected
promotion, that can be sent from the source communication
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device to the one or more destination communication devices
respectively associated with one or more recipients, the second
information including at least an executable link for providing
the one or more recipients access to third information relating to
at least one of the group of the matched advertiser and the at
least one selected promotion; and,
g. hashing an endorsement code, a source code, and a
contact code to form a unique identifier that is included in the
content communication sent to the destination device.

REJECTION
The Examiner rejects claims 1–14, 31, and 32 under 35 U.S.C. § 101
as being directed to a judicial exception (i.e., an abstract idea) without
significantly more. (Final Action 2.)
JUDICIAL EXCEPTIONS
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” (35 U.S.C. § 101.)
However, the Supreme Court has “long held” that this provision contains an
important implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” (Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013).) These three concerns are
“judicially created exceptions to § 101,” or more concisely, “judicial
exception[s].” (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1311–12 (Fed. Cir. 2016).) Thus, an abstract idea is a judicial
exception to subject matter (e.g., a method) that otherwise falls within a
category listed in the statute.
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THE ALICE TEST
In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme
Court provided a two-step test to guard against an attempt to patent a purely
an abstract idea. (Alice, 573 U.S. at 217–18.) In Alice step one, a
determination is made as to whether the claim at issue is “directed to” an
abstract idea. (Id. at 218.) If a claim is “not directed to an abstract idea
under step one of the Alice [test], we do not need to proceed to step two.”
(Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).)
More succinctly, “we stop at [Alice] step one.” (Id.)
Thus, if a claim is not “directed to” an abstract idea so as to satisfy
Alice step one, the Alice test for patent eligibility is complete, and the claim
passes muster under 35 U.S.C. § 101.4
2019 § 101 GUIDANCE
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides us with a two-pronged step (Step 2A) for
analyzing whether a claim is “directed to” an abstract idea so as to satisfy
Alice step one. (See Federal Register Vol. 84, No. 4, 50 (Jan. 7, 2019).) In
the first prong of Step 2A (Prong One), we determine whether the claim
recites a judicial exception; and, in the second prong of Step 2A (Prong
Two), we determine whether the judicial exception is integrated into a

4 If the claim at issue is directed to an abstract idea so as to satisfy Alice step
one, the second step of the Alice test must be performed. In Alice step two, a
determination is made as to whether additional elements in the claim
“amount[] to significantly more” than the abstract idea itself. (Alice, 573
U.S. at 218.) This determination involves evaluating whether these
additional elements are well-understood, routine, and/or conventional
functions, individually, or as an ordered combination. (Id. at 225.)
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practical application of the judicial exception.” (Id. at 50.) “If the recited
exception is integrated into a practical application of the exception, then the
claim is eligible at Prong Two” and “[t]his concludes the eligibility
analysis.” (Id. at 54.)
Thus, if a claim integrates an abstract idea into a practical application
under Prong Two of Step 2A, the Alice test for patent eligibility is complete,
and the claim passes muster under 35 U.S.C. § 101.5
ANALYSIS
The Examiner’s rejection is premised upon independent claim 1 being
“directed to” an abstract idea (e.g., “advertising”), and, therefore, satisfying
the first step of the Alice test. (Final Action 2.) The Appellant argues that
the Examiner does not sufficiently establish that claim 1 is directed to an
abstract idea. (See Appeal Br. 13–23.) We agree with the Appellant that the
Examiner does not adequately explain, on the record before us, why claim 1
is “directed to” an abstract idea so as to satisfy Alice step one.
Per the 2019 § 101 Guidance, we begin our Alice-step-one analysis by
determining whether independent claim 1 “recites” an abstract idea under
Prong One of Step 2A. (2019 § 101 Guidance, Federal Register Vol. 84,
No. 4, at 54.) The Guidance “extracts and synthesizes key concepts
identified by the courts as abstract ideas,” and these concepts include
“[c]ertain methods of organizing human activity,” and, more particularly,

5 If it is determined under Step 2A that the claim at issue is directed to an
abstract idea, Step 2B of the 2019 § 101 Guidance must be performed. In
Step 2B attention is given, for the first time, as to whether additional
elements in the claim are well-understood, conventional and/or routine. (See
2019 § 101 Guidance, Federal Register Vol. 84, No. 4, at 56.)
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“commercial” interactions, and, even more particularly, “advertising.” (Id.
at 52.) For example, in Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363 (Fed. Cir. 2015), the Federal Circuit held that
“tailoring information” presented in an advertisement (i.e., a targeted-
advertising strategy) is “an abstract, overly broad concept long-practiced in
our society.” (Intellectual Ventures, 792 F.3d at 1370.)6
Independent claim 1 sets forth “[a] method for targeted distribution of
promotional information relating to one or more product or service
promotions by one or more advertisers.” (Appeal Br., Claims App.) The
claimed method comprises steps (a)–(f), which involve an “advertiser[],” a
“qualified subscriber[],” and “recipients having relationships with [the]
qualified subscriber.” (Id.)
More specifically, step (a) recites obtaining “a first profile including
demographic data desired by the advertiser,” step (b) recites obtaining “a
second profile including demographic data relating to [the] subscriber,” and
step (c) recites deriving “a match condition between the first profile and the
second profile.” (Appeal Br., Claims App.) Thus, claim 1 recites using data
to match an advertiser with someone who aligns with the advertiser’s desired
target audience, which is the hallmark of a targeted-advertising strategy.
Step (c) also recites that the “match condition” qualifies the subscriber
“for the receipt of the promotional information,” step (d) recites

6 See also, e.g., Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013–14
(C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (“[T]argeted
advertising is [a well-known] concept, insofar as matching consumers with a
given product or service ‘has been practiced as long as markets have been in
operation.’”)
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communicating, to this qualified subscriber, “first product or service
information relating to one or more promotions by the matched advertiser,”
and step (e) recites receiving, at the intermediary, “an express selection by
the qualified subscriber of at least one selected promotion of the one or more
promotions.” (Appeal Br., Claims App.) Thus, claim 1 recites that the
advertiser sends product/service information to the subscriber, who then
selects the promotion(s) he/she is willing to promote. Product/service
information, promotions related to these products/services, and a party
willing to convey these promotions, are constituents of almost any targeted-
advertising strategy.
Step (f) recites transmitting, to the matched subscriber, “information
for creating a content communication” related to the selected promotion(s),
which can be sent from the subscriber to the “recipients” (i.e., to their
communication devices) having relationships with the subscriber. (Appeal
Br., Claims App.) Thus, claim 1 recites that a “content communication,”
related to the promotional products/services, is created. The creation of
advertisement “content” is a necessary step in any targeted-advertising
strategy—otherwise there would be no advertisement to target towards the
demographically-desired audience.
As such, independent claim 1 recites, in steps (a)–(f), information
(e.g., demographic data, product/service promotions, advertisement content,
etc.) and functions (e.g., data matching, promotion selecting, and content
creating) that would be innate in any targeted-advertising strategy. Targeted
advertising is a commercial interaction, and, therefore, a certain method
organizing human activity that constitutes an abstract idea. (See 2019 § 101
Guidance, Federal Register Vol. 84, No. 4, at 52.)
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Thus, independent claim 1 recites an abstract idea under Prong One of
Step 2A of the 2019 § 101 Guidance. However, this alone does not mean
that claim 1 is “directed to” this abstract idea so as to satisfy Alice step one.
We must further determine, under Prong Two of Step 2A of the Guidance,
“whether the claim as a whole integrates the recited judicial exception into a
practical application of the exception.” (2019 § 101 Guidance, Federal
Register Vol. 84, No. 4, at 54.)
When doing this Prong-Two determination, we identify “whether
there are any additional elements recited in the claim beyond the judicial
exception[],” and we then evaluate “those additional elements individually
and in combination to determine whether they integrate the exception into a
practical application.” (2019 § 101 Guidance, Federal Register Vol. 84,
No. 4, at 54–55.) Thus, if independent claim 1 recites a “step[]” that is
“beyond” those prevalent in a targeted-advertising strategy (id. at 55 n.24),
there should be a discussion, on the record, explaining why this step does not
integrate the abstract idea into a practical application.
Independent claim 1 recites, along with steps (a)–(f), a step (g) which
requires “hashing an endorsement code, a source code, and a contact code to
form a unique identifier that is included in the content communication sent
to the destination device.” (Appeal Br., Claims App.)
The Examiner maintains that “hashing” is “a fundamental economic
practice” and is “similar to the concept of hedging claimed in Bilski.” (Final
Action 5–6; see also Bilski v. Kappos, 561 U.S. 953 (2010).) Insofar as the
Examiner is saying that the recited hashing step is a fundamental economic
aspect of targeted advertising, we disagree. Although targeted advertising,
as a “broad concept,” has been “long practiced in our society” (Intellectual
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Ventures, 792 F.3d at 1370), “hashing an endorsement code, a source code,
and a contact code to form a unique identifier” has not been historically part
of this or any other fundamental economic practice.
The Examiner maintains that “hashing” is “known in the art,” and “a
hash identifier is a generic and routine concept.” (Answer 9.) As correctly
pointed out by the Examiner, the Specification describes the unique
identifier as being “created by combining several separate codes together in
any one of many encryption routines (known in the art as ‘hashing’) to form
a code that is unique for each endorsement sent by a subscriber.” (Spec.
¶ 109.) But insofar as the Examiner is saying that an additional element in a
claim cannot integrate an abstract idea into a practical application if it is
well-understood, routine, or conventional, this is contrary to the Guidance.7
The Prong-Two determination “specifically excludes consideration” of
whether an additional element is “well-understood,” “routine,” and/or
“conventional.” (2019 § 101 Guidance, Federal Register Vol. 84, No. 4,
at 55.)8
The Examiner maintains that hashing step (g) amounts to “comparing
new and stored information and using rules to identify options,” “using
categories to organize, store and transmit information,” and/or “data
recognition and storage.” (Final Action 6.) Insofar as the Examiner is

7 An application a judicial exception (e.g., an abstract idea) “to a known
structure or process may well be deserving of patent protection.” (Diamond
v. Diehr, 450 U.S. 175, 187 (1981); see also Bilski, 561 U.S. at 611.)
8 The “analysis of well-understood, routine, conventional activity is done in
Step 2B.” (2019 § 101 Guidance, Federal Register Vol. 84, No. 4, at 55.)
As indicated above, Step 2B need not be performed if it is not established
that a claim is directed to an abstract idea under Step 2A.
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saying that a data-processing step, in and of itself, is an abstract idea, this is
also contrary to the Guidance. Although the Federal Circuit has held that
data-processing steps can sometimes equate to “abstract-idea processes,” this
is only when they are “essentially mental processes,” or, in other words, they
cannot be distinguished from “ordinary mental processes.” (Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354–55 (Fed. Cir. 2016).) Here,
there is nothing in the record reflecting that the Examiner considers
“hashing” to be a “mental” process that can be “performed in the human
mind.” (2019 § 101 Guidance, Federal Register Vol. 84, No. 4, at 52.) And
“claims directed to software” are not “inherently abstract.” (Enfish,
822 F.3d at 1335.)
Consequently, the Examiner does not adequately explain why hashing
step (g) fails to integrate the recited abstract idea, namely targeted
advertising, into a practical application.9 Thus, the Examiner fails to
establish, on the record before, that independent claim 1 is “directed to” an
abstract idea so as to satisfy Alice step one. As such, there is no need to
perform Step 2B of the 2019 § 101 Guidance (or Alice step two), and “this
concludes the eligibility analysis.” (2019 § 101 Guidance, Federal Register
Vol. 84, No. 4, at 54.)
The rest of the claims on appeal likewise require the “hashing” of “an
endorsement code, a source code, and a contact code to form a unique

9 Moreover, although “[s]ome elements may be enough on their own to
meaningfully limit an exception,” it is often “the combination of elements
that provide the practical application.” (See 2019 § 101 Guidance, Federal
Register Vol. 84, No. 4, at 55.) As such, “examiners should give careful
consideration to both the element and how it is used or arranged in the claim
as a whole.” (Id.)
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identifier” (Appeal Br., Claims App.); and the Examiner’s determinations
with respect to those claims do not compensate for the above-discussed
shortcoming in the rejection of independent claim 1 (see Final Action 2–5).
Thus, on the record before us, we cannot sustain the Examiner’s
rejection of claims 1–14, 31, and 32 under 35 U.S.C. § 101.
DECISION
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–14, 31, 32 101 Eligibility 1–14, 31, 32

REVERSED

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HUTCHINGS, Administrative Patent Judge, dissenting.

I respectfully dissent from the Majority’s decision to reverse the
Examiner’s rejection of claims 1–14, 31, and 32 under 35 U.S.C. § 101.
Appellant argues the claims as a group. (Appeal Br. 12–31.) I select
independent claim 1 as representative. Claims 2–14, 31, and 32 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “the concept of displaying
company approve[d] content, [and] advertising impressions that provide
brand awareness,” which the Examiner concluded is similar to other
concepts that the courts have held abstract. (Final Action 3.) The Examiner
also determined that the “claims detail steps toward targeting promotion to
recipients,” which the Examiner characterized as a fundamental economic
practice and, thus, an abstract idea. (Id. at 4.) The Examiner also
determined that the claims do not include additional elements or a
combination of elements sufficient to amount to significantly more than the
abstract idea itself. (Id. at 4–5.)
Step One of the Mayo10/Alice Framework (2019 § 101 Guidance, Step 2A,
Prong 1)
I am not persuaded by Appellant’s arguments that the Examiner does
not fairly or accurately characterize the claimed invention (Appeal Br. 15),
or that the Examiner characterizes the claims at too high a level of
abstraction (id.). That the claims include more words than the phrase the

10 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).
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Examiner used to articulate the abstract idea, and that the Examiner, thus,
articulates the abstract idea at a higher level of abstraction than would
Appellant, is an insufficient basis to persuasively argue either that the claim
language has been mischaracterized or that the Examiner has failed to
consider the claims as a whole. (Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240–42 (Fed. Cir. 2016) (“An abstract idea can generally be
described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer.”).)
I also am not persuaded that the Examiner failed to rely on case law
that supports the rejection, or that the Examiner otherwise erred in
determining that the claims are directed to an abstract idea. (Appeal Br. 16–
23.) The Federal Circuit has explained that “the ‘directed to’ inquiry applies
a stage-one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
(Enfish, 822 F.3d at 1335 (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).) It asks whether the focus of
the claims is on a specific improvement in relevant technology or on a
process that itself qualifies as an “abstract idea” for which computers are
invoked merely as a tool. (See id. at 1335–36.) Here, it is clear from the
Specification, including the claim language, that Appellant’s claims focus on
an abstract idea, and not on any improvement to technology and/or a
technical field.
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The Specification is titled “System and Method for Distribution of
Targeted Content between Mobile Communication Devices,” and describes
in the Background section that advertisers are highly motivated to identify
new methods of creating brand awareness to users. (Spec. ¶ 2.) The ability
of advertisers to reach users using traditional broadcast advertising medium
is declining. (Id. ¶ 4.) For example, users may skip undesirable
advertisements using digital video recorders, or consume media without the
disruption of commercials using satellite radio. (Id. ¶ 3.) The Background
section, thus, concludes that “a need exists for a method that offers more
frequent and effective direct advertising to peer-to-peer users.” (Id. ¶ 4.)
The claimed invention is ostensibly intended to address this need, i.e.,
to provide “direct advertising between peer-to-peer communication
devices.” (Id. ¶ 57.) Claim 1, thus, recites a “method for targeted
distribution of promotional information relating to one or more product or
service promotions by one or more advertisers, the distribution being first
to . . . one or more qualified subscribers and thereafter . . . to . . . one or more
recipients having relationships with a qualified subscriber from whom the
information was received.” The method recites the following steps:
a. obtaining, at the intermediary, from at least one
advertiser, a first profile including demographic data desired
by the advertiser;
b. obtaining, at the intermediary, from at least one
source communication device, a second profile including
demographic data relating to a subscriber;
c. deriving, at the intermediary, a match condition
between the first profile and the second profile, thereby
qualifying the subscriber for the receipt of the promotional
information and determining a matched advertiser;
d. upon qualifying the subscriber, communicating
from the intermediary to a source communication device
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associated with the qualified subscriber, first product or service
information relating to one or more promotions by the matched
advertiser;
e. after communicating the first product or service
information to the source communication device associated
with the qualified subscriber, receiving, at the intermediary, an
express selection by the qualified subscriber of at least one
selected promotion of the one or more promotions;
f. subsequent to the step of receiving the express
selection, transmitting from the intermediary to the source
communication device, second information for creating a
content communication, related to the at least one selected
promotion, that can be sent from the source communication
device to the one or more destination communication devices
respectively associated with one or more recipients, the second
information including at least an executable link for providing
the one or more recipients access to third information relating
to at least one of the group of the matched advertiser and the at
least one selected promotion; and,
g. hashing an endorsement code, a source code, and
a contact code to form a unique identifier that is included in the
content communication sent to the destination [communication]
device.
(Appeal Br., Claims App. (emphases added).) Thus, the italicized portions
of claim 1 recite receiving data (i.e., a first profile desired by an advertiser
and a second profile of a subscriber) (steps (a) and (b)); processing data to
determine a match between a subscriber (i.e., the second profile) and an
advertiser (i.e., the first profile) (step (c)); transmitting data (i.e., promotions
by the matched advertiser to the subscriber) (step (d)); receiving data (i.e., a
selection by the subscriber of a promotion) (step (e)); transmitting data from
the intermediary to the subscriber to create a content communication related
to the selected promotion that can be sent by the subscriber to one or more
recipients (step (f)); and processing data (i.e., hashing codes to form a
unique identifier) to be included in the content communication related to the
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selected promotion that is to be sent by the subscriber to a recipient
(step (g)). These limitations, given their broadest reasonable interpretation,
recite a method for a peer-to-peer distribution of promotional information,
i.e., a commercial interaction (including advertising and marketing), which
is a method of organizing human activity and, therefore, an abstract idea.
(See 2019 § 101 Guidance, Federal Register Vol. 84, No. 4, at 52.)
Step One of the Mayo/Alice Framework (2019 § 101 Guidance, Step 2A,
Prong 2)
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), I next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong Two). The only additional elements recited in
claim 1, beyond the abstract idea, are the elements not italicized above, i.e.,
a “source communication device,” a “destination communication device[],”
and an “executable link”— elements that, as the Examiner observes (Final
Action 4), are recited at a high degree of generality, i.e., as generic computer
components (see, e.g., Spec. ¶¶ 56–59). I find no indication in the
Specification that the operations recited in claim 1 require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, or that the claimed invention is implemented using other
than generic computer components to perform generic computer functions.
(See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).)
I also find no indication in the Specification that the claimed invention
effects a transformation or reduction of a particular article to a different state
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or thing. Nor do I find anything of record that attributes an improvement in
computer functionality or other technology and/or technical field to the
claimed invention or that otherwise indicates that the claimed invention
integrates the abstract idea into a “practical application,” as that phrase is
used in the 2019 § 101 Guidance. (See 2019 § 101 Guidance, Federal
Register Vol. 84, No. 4, at 54–55.)
Appellant argues that the claims are directed to patent eligible subject
matter because they include several features that are not found in the prior
art. (Appeal Br. 24.) Specifically, Appellant points out that the claims are
not rejected under 35 U.S.C. §§ 102 or 103. (Id.) But a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 90. Appellant’s claim 1 may well improve
known methods of advertising, but I am not persuaded that the improvement
amounts to an improvement in the functioning of a computer or to other
technology or technical field (see 2019 § 101 Guidance, Federal Register
Vol. 84, No. 4, at 55), as opposed to an improvement to a method of
advertising, which is a commercial interaction (including advertising and
marketing), and, thus, an abstract idea (see id. at 52).
Appellant argues that the claims do not preempt other approaches for
displaying company approved content and advertising impressions that
provide brand awareness. (Appeal Br. 24–25.) This argument also is
unpersuasive. There is no dispute that the Supreme Court has described “the
concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption.” (Alice, 573 U.S. at 216.) But,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
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“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
(Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (citing Alice, 573 U.S. at 216).) “[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” (Id.)
Appellant argues that the claims achieve an improved technological
result, analogous to the claims in McRO. (Appeal Br. 25–26.) In particular,
Appellant contend that the claims “require an executable link that is
transmitted between devices” and “a unique identifier formed by hashing
using a novel process.” (Id. at 25.) According to Appellant, “without the
executable link . . . prior art systems (such as [a] billboard) could not provide
a destination communication device [the ability] to access information
relating to a matched advertiser or a selected promotion.” (Id.) Yet,
providing an executable link for a recipient to access information relating to
a matched advertiser or a selected promotion merely links the abstract idea
to a particular technological environment. (See 2019 § 101 Guidance,
Federal Register Vol. 84, No. 4, at 55 (explaining that an additional element
does not integrate the abstract idea into a practical application where it
generally links the use of the abstract idea to a particular technological
environment or field of use).)
With respect to the unique identifier, Appellant asserts that “without
the unique identifier . . . prior art systems could not provide for the
destination communication device to identify, provide, or store information
related to the endorsement, source, or contact.” (Appeal Br. 25.) However,
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to the extent that Appellant argues that claim 1 is directed to the technical
improvement of enabling the destination communication device to identify,
provide, or store information related to the endorsement, source, or contact,
this argument is unpersuasive at least because such improvement is not
captured in the scope of claim 1.11 Instead, claim 1 recites forming a code to
be sent in a content communication to be sent to the destination
communication device, but does not require any further processing of the

11 Appellant’s argument also is unpersuasive because Appellant does not
identify, and I do not find, support in the Specification for the destination
communication device performing these functions. Instead, Appellant’s
Specification describes that the recipient’s destination communication
device accepts a communication from the source containing an embedded
link. (Spec. ¶ 105.) When the recipient activates the embedded link, the
intermediary decodes the unique identifier (containing an endorsement code
identifying the endorsement sent to the recipient, a source code identifying
the source, and a contact code identifying the recipient), and the recipient is
directed to advertisement data hosted by the intermediary. (Id. ¶¶ 106–109.)
The intermediary monitors the number of endorsements sent by the
subscriber and the number of recipients that use the embedded link to view
the advertisement, analyzing the endorsement program. (See id. ¶¶ 106,
114.) Based on this analysis, the intermediary determines when a subscriber
no longer qualifies for the endorsement program and notifies the advertiser.
(See id. ¶¶ 114–116.) The advertiser decides whether to deactivate the
subscriber. (See id. ¶¶ 114–116.) The Specification also describes that the
intermediary can use its stored historical data regarding the interaction of the
recipient to redirect the recipient to another advertisement than the one
identified in the link. (Id. ¶ 108.) For example, the intermediary may
redirect the destination communication device to a different link if the
recipient previously accepted an offer associated with the link. (Id.) Thus,
the Specification describes the intermediary using the unique identifier to
store and analyze data to improve advertising effectiveness. But this
additional functionality — performed by the intermediary and not recited in
claim 1 — relates to an improvement to the abstract idea, not a technological
improvement.
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unique code by the destination communication device or the intermediary.
(See Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018) (holding
that claims 1–3 and 9 were ineligible because they “do not capture the
purportedly inventive concepts[;]” whereas, claims 4–7 “contain limitations
directed to the arguably unconventional inventive concept described in the
specification[,]” rendering summary judgement of claims 4–7 improper),
cert. denied, 2020 WL 129532 (U.S. Jan. 13, 2020); see also Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1322 (Fed. Cir. 2016)
(“The district court erred in relying on technological details set forth in the
patent’s specification and not set forth in the claims to find an inventive
concept.”).)
Step (g) of claim 1 recites “hashing an endorsement code, a source
code, and a contact code to form a unique identifier that is included in the
content communication sent to the destination [communication] device.”
Appellant does not identify, and I do not find, any portion of the
Specification that describes a particular manner of hashing or otherwise
indicates an improvement to technology. Instead, the Specification
describes at paragraph 109 that “[t]he unique identifier 930 is created by
combining several separate codes together in any one of many encryption
routines (known in the art as ‘hashing’) to form a code that is unique for
each endorsement sent by a subscriber.” Thus, the claimed step of
“hashing” is no more than encoding an endorsement code, a source code,
and a contact code, in any manner, to form a unique identifier that is
included in the content communication.
This concept is similar to concepts that the Federal Circuit has held to
be an abstract concept. For example, in RecogniCorp, LLC v. Nintendo Co.,
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855 F.3d 1322, 1326 (Fed. Cir. 2017), the Federal Circuit determined that
“claim 1 is directed to the abstract idea of encoding and decoding image
data.” There, the court held that the claimed method “reflects standard
encoding and decoding, an abstract concept long utilized to transmit
information. Cf. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340–41 (Fed. Cir. 2017) (organizing, displaying, and
manipulating data encoded for human- and machine-readability is directed to
an abstract concept).
Drawing an analogy to the claims in Digitech Image Technologies,
LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), the
Federal Circuit in RecogniCorp expounded that in Digitech
[w]e explained that the claim at issue “recites a process of taking
two data sets and combining them into a single data set” simply
by organizing existing data into a new form. [Digitech Image
Techs., 758 F.3d] at 1351. A process that started with data, added
an algorithm, and ended with a new form of data was directed to
an abstract idea. Id. In this case, the ’303 patent claims a method
whereby a user starts with data, codes that data using “at least
one multiplication operation,” and ends with a new form of data.
We discern no material difference between the Alice step one
analysis in Digitech and the analysis here.
(RecogniCorp, 855 F.3d at 1327.) Like the process claims in Digitech,
Appellant’s limitation (g) of claim 1 starts with data (three codes), adds an
algorithm (hashing), and ends with a new form of data (a unique identifier).
And like claim 1 of RecogniCorp, Appellant’s limitation (g) of claim 1
recites hashing, i.e., standard encoding, which is an abstract concept long
utilized to transmit information.
Appellant’s hashing limitation is also similar to the claims at issue in
Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 910
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(Fed. Cir. 2017). There, the Federal Circuit held that the claims at issue
“generically provide for the encoding of various data onto a mail object but
do not set out how this is to be performed.” The Federal Circuit pointed out
that “[t]here is no description of how the unique identifier is generated or
how a unique identifier is different from a personal name, or return address.”
Secured Mail Sols., 873 F.3d at 910. Here, Appellant’s claim 1, like the
claims at issue in Secured Mail Solutions, is not directed to the specific
details for generating or processing the unique code to indicate any
improvement to technology and/or technical field, but instead generically
provides for hashing (i.e., encoding) various data.
I also do not see any parallel between the specific set of rules
described in McRO that result in an improvement to technology in 3-D
animation techniques, and the result-based, functional limitations recited in
Appellant’s claim 1. (See Appeal Br. 25–26.) In McRO, an improvement in
computer animation was realized by using “rules, rather than artists [i.e.,
human animators], to set the morph weights and transitions between
phonemes” (McRO, 837 F.3d at 1313), i.e., in McRO, the invention used
“rules to automatically set a keyframe at the correct point to depict more
realistic speech, achieving results similar to those previously achieved
manually by animators” (id. at 1307). The Federal Circuit found that the
claimed rules allowed the computer to produce accurate and realistic
synchronization and facial expressions in animated characters that
previously could only be produced by human animators. (Id. at 1313.)
Here, claim 1 does not recite a specific set of rules that results in an
improvement to technology analogous to the claims in McRO. Instead,
claim 1 recites results-based rules for each of limitations (a) through (g),
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without providing sufficient technological details for how to achieve the
desired results. See Intellectual Ventures, 850 F.3d at 1342 (explaining that
“[o]ur law demands more” than claim language that “provides only a result-
oriented solution, with insufficient detail for how a computer accomplishes
it”). For example, limitation (f) recites “transmitting from the intermediary
to the source communication device, second information for creating a
content communication . . ., the second information including at least an
executable link for providing the one or more recipients access to third
information relating to at least one of the group of the matched advertiser
and the at least one selected promotion.” No particular manner for
transmitting the executable link is recited in claim 1 that would indicate any
improvement in technology. Likewise, limitation (g) recites “hashing an
endorsement code, a source code, and a contact code to form a unique
identifier that is included in the content communication.” As described
above, no particular manner for hashing the codes is recited in claim 1 that
would indicate any improvement in technology. Moreover, Appellant does
not identify, and I do not find, any portion of the Specification that describes
a particular manner of transmitting an executable link, hashing codes, or
otherwise indicates an improvement to technology. The same holds true for
the other recited limitations.
Appellant further argues that limitations (a) through (g) of claim 1,
“taken as an ordered combination, improve the functioning of the computer
network by eliminating messages that would otherwise need to be sent to
unqualified recipients, thereby freeing bandwidth and memory.” (Appeal
Br. 30 (citing Spec. ¶¶ 120–164).) Specifically, Appellant’s Specification
compared the performance of a computer system when “executing a prior art
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email blast type advertising campaign” (Spec. ¶ 123) with the performance
of the same computer system when executing the advertising campaign
described in the Specification (id. ¶ 124). Appellant concludes that these
improvements reflect an “improvement in the functioning of the computer
itself.” (Appeal Br. 31.) However, I am not persuaded that this
improvement reflects an improvement to the functioning of the computer
itself, as opposed to an improvement in known forms of advertising (i.e., a
commercial interaction that is the abstract idea itself).
I find nothing of record, short of attorney argument, that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a “practical application,” as that phrase is used in the Revised
Guidance. (See 2019 § 101 Guidance, Federal Register Vol. 84,
No. 4, at 55.) At best, claim 1 generally applies the abstract idea to a
particular technological environment or field of use using generic
communication devices (e.g., peer-to-peer communication among generic
communication devices).
Step Two of the Mayo/Alice Framework (2019 § 101 Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, I next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
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amount to “significantly more” than the judicial exception itself. (2019
§ 101 Guidance, Federal Register Vol. 84, No. 4, at 55.)
Appellant asserts claim 1 “uses different techniques than the prior art
discloses and so achieves an improved technological result.” (Appeal
Br. 26.) Specifically, Appellant quotes limitations (f) and (g) and asserts
that the destination communication device would be unable “to access
information relating to a matched advertiser or a selected promotion without
the executable link” and that “there would not be a way for the destination
[communication] device to identify, provide, or store information related to
the endorsement, source, or contact without the unique identifier.” (Id.
at 26–27.) Appellant further asserts that “these features cannot be routine or
well-known because, as admitted by the Office Action, they are not found in
the prior art.” (Id. at 27.) These arguments are not persuasive for much the
same reasons discussed above.
As an initial matter, although the second step in the Mayo/Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but, rather, a search for “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). I am not persuaded that the Appellant has identified any limitation
or combination of limitations that amounts to significantly more than the
abstract idea itself.
For example, Appellant asserts that the executable link of
limitation (f) enables the destination communication device to access
information related to an advertiser or promotion. (Appeal Br. 27.) But,
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ultimately accessing this information (even if not positively recited in
claim 1) is a critical part of the abstract idea to which the claim is directed,
i.e., a peer-to-peer distribution of promotional information (or advertising),
which is a commercial interaction and, thus, an abstract idea.
Appellant cannot reasonably contend, nor does Appellant, that there is
a genuine issue of material fact regarding whether the transmission from the
intermediary to the source communication device of the executable link is
well understood, routine, or conventional, where, as here, there is nothing in
the Specification to indicate that the operation recited limitation (f) of claim
requires more than using existing computers or the Internet to carry out
conventional processes. Indeed, the Federal Circuit, in accordance with
Alice, has “repeatedly recognized the absence of a genuine dispute as to
eligibility” where claims have been defended as involving an inventive
concept based “merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality.” Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018)
(Moore, J., concurring); see also BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other,
non-abstract features of the claimed inventions, alone or in combination, are
not well-understood, routine and conventional database structures and
activities. Accordingly, the district court did not err in determining that the
asserted claims lack an inventive concept.”.)
Turning to limitation (g) of claim 1, as an initial matter, I assume
Appellant intended to state that there was no way for the intermediary (not
the destination communication device) to identify, provide, or store
information related to the endorsement, source, or contact without the
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unique identifier. I find no indication, and Appellant does not identify any
indication, in the Specification for the destination communication device
using the unique identifier to perform the functions described by Appellant,
and the destination communication device would seemingly have no need to
identify itself with a code. But to the extent that the inventive concept
purportedly lies in these additional functions performed by the intermediary
or the destination device, no such functionality is recited in claim 1. Thus,
the purported inventive concept lies outside the scope of claim 1.
Instead, limitation (g) of claim 1, the final limitation, recites hashing
three codes to form a unique identifier that is to be included in the content
communication sent to the destination communication device. The
Specification makes clear that this hashing is well known, routine, and
conventional in the art. (See Spec. ¶ 109 (“[T]he unique identifier . . . is
created by combining several separate codes together in any one of many
encryption routines (known in the art as ‘hashing’) to form a code that is
unique for each endorsement sent by a subscriber.”) Appellant further
acknowledges in the Appeal Brief that claimed function of hashing is well
known. (See Appeal Br. 28 (“One example of a hashing function that is in
accordance with what is described in the specification is the MD5 Message-
Digest Algorithm from RFC1321, a copy of which [is] included with this
response as Exhibit F.”) Additionally, as set forth above, the Federal Circuit
has repeatedly held that generic encoding, such as the hashing operation
recited in limitation (g), constitutes an abstract idea.
Here, Appellant has not identified, and I do not find, any additional
elements recited in claim 1, individually or in combination, that provide
significantly more than the abstract idea.
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I am not persuaded, on the present record, that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, I would
sustain the Examiner’s rejection of claim 1, and claims 2–14, 31, 32, which
would fall with claim 1.