Bessieres, Marshall et al.

Patent Trials and Appeals Board

Feb 24, 2020

11866248 - (D) (P.T.A.B. Feb. 24, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/866,248 10/02/2007 Marshall Bessieres 058083-0857806 (O0081) 6785
72058 7590 02/24/2020
Kilpatrick Townsend & Stockton LLP/Adobe
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
MINCEY, JERMAINE A
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
02/24/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARSHALL BESSIERES,
DAVID BRINEGAR, MARK O'BRIEN,
BRIAN SULLIVAN, and STEVEN KUSMER
____________________

Appeal 2019–000958
Application 11/866,248
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, DANIEL N. FISHMAN, and
JON M. JURGOVAN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final rejection (mailed January 25, 2018, hereinafter Final Act.)
of claims 20–41 and 44–47.0F1 Appeal Br. 4. Appellant has cancelled claims

1 Appellant identifies Adobe Systems Incorporated as the real party in
interest. Appeal Br. 2.
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1–19, 42, 43, and 48. Appeal Br. 31, 35. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 20 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
20. A method comprising:
[A.] providing for display in a browser a content page
comprising a plurality of content items as results of a
search request;
[B.] detecting at the browser a selection of a selected content
item of the plurality of content items, the selected content
item corresponding to a search result;
[C.] based on detecting at the browser the selection of the
selected content item corresponding to the search result,
[i.] providing a first search refinement window for display
overlaid on the content page, the first search
refinement window comprising information on the
selected content item and a first search refinement
option associated with the selected content item, and
[ii.] preloading to a cache of the browser additional
information comprising a preview of additional
content items associated with the first search
refinement option;
[D.] detecting at the first search refinement window a selection
of the first search refinement option;
[E.] based on detecting at the first search refinement window
the selection of the first search refinement option,
providing a second search refinement window for display
overlaid on the content page and on the first search
refinement window, the second search refinement window
comprising the preloaded additional information and a
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second search refinement option associated with the
selected content item; and
[F.] based on detecting a selection of the second search
refinement option, refining the plurality of content items
provided for display in the content page based on the
information on the selected content item and the preloaded
additional information.

REFERENCES1F2
The prior art relied upon by the Examiner is:

Name Reference Date
Talib US 2001/0044758 A1 Nov. 22, 2001
Lawrence US 7,281,008 B1 Oct. 9, 2007

REJECTIONS2F3
A. Section 101
The Examiner rejects claims 20–41 and 44–47 under 35 U.S.C. § 101
because “the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more,” i.e., because the subject matter of the claimed invention is patent-
ineligible. Final Act. 4–14.

2 All citations herein to the references are by reference to the first named
inventor/author only.
3 For convenience, we refer to all 35 U.S.C. § 103(a) rejections herein as
rejections under 35 U.S.C. § 103.
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We select claim 20 as the representative claim for this rejection. As to
this rejection, our decision as to the § 101 rejection of claim 20 is
determinative as to the § 101 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 101
rejection of claims 21–41 and 44–47.
B. Section 103
The Examiner rejects claims 20–23, 40, and 41 under 35 U.S.C. § 103
as being unpatentable over the combination of Talib and Lawrence. Final
Act. 15–21. We select claim 20 as the representative claim for this
rejection. The contentions discussed herein as to claim 20 are determinative
as to this rejection.
The Examiner rejects claims 24–39 and 44–47 under 35 U.S.C. § 103
as being unpatentable over various combinations of Talib, Lawrence, and
numerous other references. Final Act. 21–40. The contentions discussed
herein as to claim 20 are determinative as to these rejections.
Therefore, except for our ultimate decision, we do not address the
§ 103 rejections of claims 21–41 and 44–47 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the rejections on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.

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A. Section 101
A.1.
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 Memorandum”).3F4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” 2019
Memorandum, 84 Fed. Reg. at 51; see also October 2019 Memorandum
Update at 1.
Under that guidance of these Memoranda, we first look to whether the
claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activity
such as a fundamental economic practice, or mental processes); and
(2) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).4F5

4 In response to received public comments, the Office issued a further
memorandum on October 17, 2019, clarifying guidance of the January 2019
Memorandum. USPTO, October 2019 Update: Subject Matter Eligibility
(the “October 2019 Memorandum Update”) (available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf).
5 USPTO personnel perform this evaluation 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
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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 Memorandum, 84 Fed. Reg. at 52–56.

A.2.
Appellant raises the following arguments in contending that the
Examiner erred in rejecting claim 20 as being directed to patent-ineligible
subject matter because the claim recites additional elements that integrate
the judicial exception into a practical application.
First, Appellant contends the claim effects an improvement in the
technical field of reducing wait time for a user to narrow search results. See
Appeal Br. 17–19. Particularly, Appellant contends:
The appealed claims describe techniques that are directed
to solving a technical problem inherent to browsing search
results (i.e., additional web pages) from a web page of a browser
that displays a list of browsable search results. The specification
explains that the claimed invention provides browser-related
improvements, such as reducing wait time for a user to narrow

exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
54–55, Section III(A)(2).
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search results or access online content that is more relevant to the
user. For example, as noted in the specification, “[a] significant
advantage of prefetching is that these tasks [for obtaining files]
are performed in advance . . . reduc[ing] visitor effort and wait
time.”
Appeal Br. 17–18 (emphasis added, footnote omitted).
Second, Appellant contends the claim provides an improvement to a
user interface for an electronic device. See Appeal Br. 14–17. Particularly,
Appellant contends:
[T]he [claim] limitations require that the content page and search
refinement windows exist in a particular state, such as the
recited overlay of the first and second search refinement
windows. For example, claim 20 requires that the first search
refinement window is overlaid on the content page, and the
second search refinement window is overlaid on the content page
and on the first search refinement window.
Appeal Br. 16 (emphasis added, footnotes omitted).
Appellant also contends:
In particular, the pure mental steps of “collecting and analyzing”
information, particularly at the level of generality in Electric
Power Group, are vastly different from providing multiple
overlaid refinement windows on a content page displaying search
results (as required by claims 20, 29, and 39). . . . Thus, unlike
the abstract ideas in Electric Power Group, which broadly
claimed steps encompassing mental operations, the claim
features identified above replace operations performed by a
human with a highly specific set of interrelated computer-based
elements. Therefore, the Electric Power Group decision is
insufficiently similar to the claimed concept in the presently
presented claims, as required for establishing that claims are
directed to an abstract idea.

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Thus, the Examiner’s assertion that the claims are drawn
to an abstract idea is an improper oversimplification that fails to
account for the specific requirements of the claims.
Appeal Br. 14 (emphasis added).
A.3.
We disagree with Appellant’s first argument. Contrary to Appellant’s
assertion, prefetching to reduce search effort and wait time is not a technical
solution to a technical problem. Rather, this is a universal data retrieval
problem present even in manual (non-technical) data retrieval. At best,
Appellant applies a non-technical solution to the underlying non-technical
problem. For example, this is the same non-technical problem/solution as a
library customer telling a librarian, “please get me reviews of the books by
author X, and make me a cache of the books. I will read the reviews and
then select a single book from the cache to read by author X.” Similarly,
telling a building contractor “please get me product brochures on the 10 best
type-X products, and make a cache of the related specification sheets. I will
review the brochures and then select a specification sheet to review for a
particular type-X product.”
A.4.
We agree with Appellant’s second argument. Essentially, Appellant
is arguing that the Examiner’s articulated reasoning for Alice/Mayo step 1
fails to show the “overlaid” display format is not an additional element that
integrates the judicial exception into a practical application. Alice Corp. Pty.
Ltd. v. CLS Bank Intern, 573 U.S. 208 (2014); Mayo Collaborative Services
v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012).
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To provide sufficient articulated reasoning as to why a claim is
directed to an abstract idea or other patent-ineligible concept (e.g., a law of
nature), an Examiner must adequately address both (a) what the character of
the claim as a whole is directed to, and (b) whether that something is an
abstract idea or a patent-ineligible concept. See Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
In applying step 1 of the Alice/Mayo analysis, the Examiner
determines:
[D]etecting at the browser a selection of a selected content
item of the plurality of content items, the selected content
item corresponding to a search result, based on detecting at
the browser the selection of the selected content item
corresponding to the search result providing a first search
refinement window for display overlaid on the content page
is seen as collecting information. The selection of a selected
content item is seen as the collected information. The content
item is seen as the information. Detecting at the browser is seen
as the analyzing the collected information. The first search
refinement window is seen as the displaying certain results of the
collection and analysis (Collecting information, analyzing it, and
displaying certain results of the collection and analysis (Electric
Power Group).
Final Act. 6 (emphasis added).
We agree with Appellant that, as to the overlaid display, the
Examiner’s analysis “is an improper oversimplification that fails to account
for the specific requirements of the claims.” Appeal Br. 14. Step 1 of the
Alice/Mayo analysis is based on whether, considered in light of the
specification, the character of the claim as a whole is directed to excluded
subject matter. See Enfish, 822 F.3d at 1335. By oversimplifying claim 20
Examiner fails to provide sufficient articulated reasoning (i.e., notice) to
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Appellant of the Examiner’s determination of what the character of claim 20
as a whole is directed to. Such an oversimplified claim analysis, at best,
may show that the claim involves an abstract idea, but cannot show the
character of the claim as a whole is directed to an abstract idea.
In claim 20, the overlaid display operations are recited with greater
specificity (a lower level of generality) than the operations recited in the
claims at issue in Bilski and Alice.5F6 From a plain reading of claim 20, it is
clear that this feature of claim 20 is not recited as the broad collecting of
data as determined by the Examiner. See Final Act. 6. Rather, claim 20
includes at least overlaid display additional element not sufficiently
addressed by the Examiner.
A.5.
Appellant’s arguments persuade us the Examiner fails to properly
determine what the claim is directed to. The Examiner fails to provide
sufficient articulated reasoning to support a conclusion that all the specific
claim limitations that the Examiner labels as included in the abstract idea are
actually an abstract idea. Therefore, we do not sustain the rejection under 35
U.S.C. § 101 of claim 20.

6 Bilski v. Kappos, 561 US 593 (2010).
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B. Section 103
B.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 20 under 35 U.S.C. § 103(a).
Lawrence fails to disclose or suggest a search refinement
window that is provided for display overlaid on a content page
based on detecting selection of a content item, as required by
claims 20, 29, and 39.
Indeed, although the cited Lawrence disclosures generally
include selecting content and overlaying windows, these
disclosures fail to disclose the claimed relationship in which a
search refinement window is overlaid on a content page based
on selecting a content item in the content page. Lawrence
discloses that a “window comprising the search results may be
layered on top of other windows or may be covered by other
windows.” Lawrence further discloses that “[a]n event can be
any occurrence possible associated with an article . . . such as . . .
selecting text in an article.” However, Lawrence does not
suggest a relationship between the described events (e.g.,
selecting text) and displaying a layered window with search
results, let alone that a window comprising search results may be
layered on top of another window based on a detected event.
Appeal Br. 24–25 (emphasis added, footnotes omitted).
B.2.
In rejecting claim 20 under § 103 (Final Act. 15–18), we do not find
where the Examiner’s analysis adequately addresses the “overlaid on”
limitation of claim 20. In the rejection, the Examiner determines:
Lawrence teaches based on detecting at the browser the
selection of the selected content item corresponding to the
search result providing a first search refinement window for
display overlaid on the content page (Col. 4 Lines 30-36
Lawrence discloses capturing event data associated with the
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content displayed from the application. Col. 4 Lines 5-10
Lawrence discloses selecting text within a display is event data.
Col. 4 Lines 5-6 Lawrence discloses a user interaction request is
seen as selecting text. Col. 4 Lines 25-29 Lawrence discloses
generating queries based upon user events stored in a queue.
Selecting text is seen as search refinement. Col. 7 Lines 60-63
Lawrence discloses displaying a document as search engine
results page. Col. 1 Lines 46-48 Lawrence discloses the
windows are cascaded. Fig. 6 Lawrence discloses the cascaded
window are seen as search refinement window overlaid on the
content page).
Final Act. 16.
In the Answer, the Examiner further determines:
Col. 1 Lines 35 Lawrence discloses its conventional for search
results may be layered on top of other windows or may be
covered by other windows, there exist a need to avoid the visual
interference. The display overlaid on the content page is seen as
a window layered on top of other windows. Therefore the
concept of display overlaid on the content page is obvious to a
person of ordinary skill in the art at the time of the invention.
Col. 4 Lines 1-5 Lawrence discloses the user interacting with the
text on the display. Col. 4 Lines 47-65 Lawrence discloses the
user interactions are treated as real events. Col. 5 Lines 27-34
Lawrence discloses the input query can be a user real time event.
Col. 6 Lines 65-68 and Col. 7 Lines 1-3 Lawrence discloses
producing a search result in response to a query. Col. 7 Lines 3-
6 Lawrence discloses the display processor presents a result set
that contains links to email threads, or other messaging articles.
Col. 7 Lines 61-65 Lawrence discloses the HTML document
contains the results as a summary of the article identifier refers.
As a user selects additional content, new search windows appear
that contain text that summaries the text which the summary
refers. Col. 12 Lines 33-38 Lawrence discloses the display
processor may place a content display which may overlay a
region of the current window.
Ans. 11.
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We conclude, after reviewing the Examiner’s rejection (Final Action
and Answer) and consistent with Appellant’s above arguments as to
claim 20, there is insufficient articulated reasoning to support the
Examiner’s findings that the combination of Talib and Lawrence teaches (or
renders obvious) the argued “based on” limitation. Although, as noted by
Appellant (Appeal Br. 24–25), Lawrence teaches “layering” of displays and
an “event” such as selecting text in an article, we do not find in the
Examiner cited portions of Lawrence any suggestion to form a relationship
between the event and the layering as is required by Appellant’s claim 20.
Nor does the Examiner adequately articulate why such a relationship would
have been obvious to an artisan. Therefore, we conclude that the
Examiner’s articulated reasoning is insufficient to support the Examiner’s
conclusion that claim 20 is rendered obvious by Talib and Lawrence.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 20–41 and 44–47 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
The Appellant has demonstrated the Examiner erred in rejecting
claims 20–41 and 44–47 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 20–41 and 44–47 under 35 U.S.C.
§ 101 is reversed.
The Examiner’s rejections of claims 20–41 and 44–47 under
35 U.S.C. § 103 are reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20–41, 44–47 101 Eligibility 20–41, 44–
47
20–41, 44–47 103 Talib, Lawrence 20–41, 44–
47
Overall
Outcome

20-41, 44–
47

REVERSED