Byron William. Reese

Patent Trials and Appeals Board

Jan 30, 2020

13560834 - (D) (P.T.A.B. Jan. 30, 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.
13/560,834 07/27/2012 Byron William Reese 104128-223401/US 2413
64494 7590 01/30/2020
GREENBERG TRAURIG, LLP (SV)
c/o: Greenberg Traurig LLP - Chicago Office
77 West Wacker Drive, Suite 3100
Intellectual Property Department
Chicago, IL 60601
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/30/2020 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):
cadanoc@gtlaw.com
clairt@gtlaw.com
gtipmail@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BYRON WILLIAM REESE
Appeal 2018-006625
Application 13/560,834
Technology Center 3600

Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
KHAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 7, and 10–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Leaf Group, Ltd.
Appeal Br. 2.
Appeal 2018-006625
Application 13/560,834
2
CLAIMED SUBJECT MATTER
Appellant describes the invention as relating to
[s]ystems and methods are provided . . . for presentation of links
to content to a user on webpages of a website where titles
associated with the links are tuned to the user’s psychographic
variables. In one embodiment, a respective plurality of titles is
generated for each of a plurality of content items. At least some
titles are tagged with psychographic tags. When a user accesses
content by selecting a link having a title that is tagged with one
or more psychographic tags, the system stores a representation of
such tags in association with the user. When additional links for
recommended content are displayed to the user, the system
selects titles for links to such content based on psychographic
tags associated with the user and the titles.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
generating, by a computing device coupled to the Internet,
a respective plurality of titles for each content item of a plurality
of content items;
tagging, by the computing device, for each of at least a
subset of the plurality of content items, at least one of the
respective plurality of titles of the respective content item with at
least one respective psychographic tag, wherein the at least one
respective psychographic tag represents an attribute or a structure
of the at least one of the respective plurality of titles;
receiving, by the computing device, a first request for a
first webpage, the request for a first webpage including at least
one received psychographic tag;
requesting, by the computing device, at least one content
item in response to receiving a request for a first webpage, the at
least one content item representing content related to the first
webpage;
identifying, by the computing device, a selected title of the
plurality of titles of the at least one content item that is tagged
Appeal 2018-006625
Application 13/560,834
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with a first psychographic tag, wherein the selected title is
selected based on the at least one received psychographic tag;
adding, by the computing device, a first link to the at least one
content item to the first webpage, the first link including the
selected title;
transmitting, by the computing device over the Internet,
the first webpage including the first link to the end user device;
receiving, by the computing device over the Internet, a
selection of the first link on the first webpage by a user viewing
the first webpage on the end user device; and
associating, by the computing device, the user with the
first psychographic tag, wherein associating the user with the
first psychographic tag comprises causing, by the computing
device, a representation of the psychographic tag to be stored in
a cookie on the end user device, wherein storage of the first
psychographic tag in the cookie is performed via a widget
embedded in the first webpage that automatically stores the
psychographic tag in the cookie in response to selection of the
first link by the user.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Brunsman US 2012/0030015 A1 Feb. 2, 2012
Maharajh US 2008/0195664 A1 Aug. 14, 2008
Olliphant US 2008/0235123 A1 Sept. 25, 2008
Coyer US 8,856,331 B2 Oct. 7, 2014
Welsh US 6,757,691 B1 June 29, 2004
Cox US 2005/0076061 A1 Apr. 7, 2005
Chaikin US 2011/0161847 A1 June 30, 2011

REJECTIONS
1. Claims 1, 2, 7, and 10–20 stand rejected under 35 U.S.C. § 101
as directed to a judicial exception to patentable subject matter. Non-Final
Act. 3–5.
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Application 13/560,834
4
2. Claims 1, 2, 7, 10, 16, 17, and 18–21 stand rejected under 35
U.S.C. § 103 as unpatentable over Brunsman, Maharajh, and Olliphant.
Non-Final Act. 5–11.2
3. Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable
over Brunsman, Maharajh, Olliphant, and Coyer. Non-Final Act. 11–12.
4. Claim 12 stands rejected under 35 U.S.C. § 103 as unpatentable
over Brunsman, Maharajh, Olliphant, and Welsh. Non-Final Act. 12–13.
5. Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Brunsman, Maharajh, Olliphant, and Cox. Non-Final Act.
13–16.
6. Claim 15 stands rejected under 35 U.S.C. § 103 as unpatentable
over Brunsman, Maharajh, Olliphant, and Chaikin. Non-Final Act. 16–17.
OPINION
REJECTION UNDER 35 U.S.C. § 101
Legal Principles
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract

2 Although claim 8 appears in the subheading of this rejection in the Non-
Final Rejection (see Non-Final Act. 5), the Examiner does not reject it under
the merits of 35 U.S.C. § 103 because the Examiner finds claim 8 has
improper dependency (see Non-Final Act. 9). If prosecution continues, the
Examiner may want to determine whether the aforementioned dependency
issue raises indefiniteness issues under 35 U.S.C. § 112.
Appeal 2018-006625
Application 13/560,834
5
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. 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 Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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 water-proof 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
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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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 Supreme 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. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step 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. (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.
The United State Patent and Trademark Office published revised
guidance on the application of § 101 (2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)) and recently, published
an update to that guidance (October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55,942 (Oct. 18, 2019)) (jointly referred to as
Appeal 2018-006625
Application 13/560,834
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“Guidance”). Under the Guidance, in determining whether a claim falls
within an excluded category, we first look, under step 2A of the Guidance,
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to step
2B of the Guidance and look 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.
See Guidance, 84 Fed. Reg. at 56.
Prong One of Step 2A
The Examiner determines claims 1, 2, 7, and 10–20 to be “directed
towards tagging content with attributes and associated tags with users, and
selecting/presenting of content titles/content on a webpage.” Non-Final Act.
3. To support the determination, the Examiner cites to various limitations
including:
tagging, by the computing device, for each of at least a
subset of the plurality of content items, at least one of the
respective plurality of titles of the respective content item with at
least one respective psychographic tag, wherein the at least one
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Application 13/560,834
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respective psychographic tag represents an attribute or a structure
of the at least one of the respective plurality of titles
and finds that they are “drawn to the abstract idea.” Non-Final Act. 3.
In order to determine whether a claim is directed to an abstract idea,
we first determine, under prong one of step 2A, whether the claim recites an
abstract idea. The Guidance identifies three judicially-excepted groupings:
(1) mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices and commercial interactions, and
(3) mental processes.
We agree with the Examiner that at least some of the limitations of
claim 1 recite an abstract idea. For example, claim 1 recites (1) “generating
. . . a respective plurality of titles for each content item of a plurality of
content items,” (2) “tagging . . . at least one of the respective plurality of
titles . . . with at least one respective psychographic tag, wherein the at least
one respective psychographic tag represents an attribute or a structure of the
at least one of the respective plurality of titles,” and (3) identifying . . . a
selected title of the plurality of titles of the at least one content item that is
tagged with a first psychographic tag, wherein the selected title is selected
based on the at least one received psychographic tag.”
We determine that generating a plurality of titles for a content item
(such as an online article), tagging the titles with a psychographic tag that
represents attributes of the titles and identifying a selected title based on at
least one psychographic tag are steps that involve mental processes.
Generating a plurality of titles for an article, whether online or otherwise, is
an act that involves mental creativity. Selecting one of those titles based on
the titles psychographic tag involves judgment and is also a step that may be
performed mentally. The Specification explains that psychographic tags
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Application 13/560,834
9
“are attributes about the title and how it is structured as to . . . what emotions
the title designed to appeal to.” Spec. ¶ 63. “[P]sychographic[] variables
. . . refer to variables . . . that characterize personality, values, attitudes,
interests, or lifestyles.” Spec. ¶ 18. Thus, selecting a title based on a
psychographic tag, refers to selecting a title based on the emotional qualities
of the title. Such selection can be performed mentally.
Mental processes are one of the categories that the Guidance
recognizes as constituting an abstract idea. See Guidance, 84 Fed. Reg. at
52. Thus, we determine the pending claims recite an abstract idea under
prong one of step 2A.
Prong Two of Step 2A
Under prong 2 of step 2A of the Guidance we determine whether the
claim as whole integrates the recited abstract idea into a practical application
of the abstract idea. 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. To evaluate whether the claims integrate the abstract idea into a
practical application, we identify whether there are any additional elements
recited beyond the abstract idea, and evaluate those additional elements
individually and in combination.
Some exemplary considerations laid out by the Supreme Court and the
Federal Circuit indicative that an additional element integrates an abstract
idea into a practical application include (i) an improvement in the
functioning of a computer or to another technological field, (ii) an
application of the judicial exception with, or by use of, a particular machine,
Appeal 2018-006625
Application 13/560,834
10
(iii) a transformation or reduction of a particular article to a different state or
thing, or (iv) a use of the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h).
In the context of prong two of step 2A, Appellant argues “the claims
contain numerous limitations that cannot reasonable be read as being
performed by a human being or by pen and paper.” Appeal Br. 15. For
example, Appellant argues “the claims rely on the technical nature of the
Internet: the format of webpages, the structure of webpages (e.g., having a
title), the internal workings of web browser (e.g., use of cookies), and
computer-implemented title generation algorithms that are able to
consistently updated based on user interactions with a webpage.” Appeal
Br. 15–16.
Reviewing the claim limitations as a whole, we agree with Appellant.
Here, we determine the claim recites additional elements that integrate the
abstract idea into a practical application. In particular we find that certain
claim limitations improve the functioning of a computer or other
technological field. Specifically, we find limitations such as (1) “receiving,
by the computing device, a first request for a first webpage, the request for a
first webpage including at least one received psychographic tag,” (2)
“adding, by the computing device, a first link to the at least one content item
to the first webpage, the first link including the selected title,” (3)
“transmitting, by the computing device over the Internet, the first webpage
including the first link to the end user device,” and (4) “associating the user
with the first psychographic tag . . . causing, by the computing device, a
representation of the psychographic tag to be stored in a cookie on the end
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user device, wherein storage . . . is performed via a widget embedded in the
first webpage” to be technical in nature and directed to improving the
functionality of a computer to select titles for online content. The claim
makes clear that, although psychographic tags represent attributes of titles,
they are implemented in a technological manner as information that can be
stored in a cookie, the storage of which is performed by a widget embedded
in a webpage, and which may be transmitted along with webpages over the
Internet.
These limitations restrict the recited mental processes to the
technological environment of the Internet and do so in a way that provides a
technological solution that improves the computers that implement the
invention. For the foregoing reasons we determine the claims integrate the
recited mental steps into a practical application of those mental steps.
Step 2B of the Guidance
Because we determine the claims integrate the recited abstract idea
into a practical application, we need not analyze the claims under step 2B of
the Guidance.
Conclusion
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
2, 7, and 10–20 under 35 U.S.C. § 101.
REJECTION UNDER 35 U.S.C. § 103
The Examiner finds Brunsman teaches selecting titles for content
based on various attributes of the title. Non-Final Act. 6 (citing Brunsman
¶ 70). The Examiner finds the attributes of Brunsman’s titles to be similar to
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the claimed tags. Non-Final Act. 6. Brunsman’s tags, however, are not
disclosed as “psychographic tags” and thus the Examiner relies on Maharajh,
which teaches selecting content based on psychographic tags. Non-Final
Act. 6 (citing Maharajh ¶¶ 174, 185, 190). The combination of Brunsman
and Maharajh, according to the Examiner, teaches selecting titles for content
based on psychographic tags. We agree with the Examiner’s findings and
conclusions.
Appellant argues “Maharajh fails to teach or suggest a psychographic
tag.” Appeal Br. 22. Moreover, Appellant argues Maharajh does not teach
that the “psychographic tag is generated based on the ‘attribute or a structure
of the at least one of the respective plurality of titles.’” Appeal Br. 22.
Further, Appellant argues “the ‘psychographics’ of Maharajh are not related
to the title of content but rather are ‘associated with a user.’” Appeal Br. 22.
Turning to Brunsman, Appellant argues that although Brunsman selects
titles, it does so based on text processing rules, rather than selecting titles
based on tags.
The aforementioned arguments are unpersuasive of Examiner error.
Appellant’s argument that Maharajh fails to teach or suggest a
psychographic tag is unpersuasive. Maharajh teaches applying tags to
content (Maharajh ¶¶ 3, 174) and teaches that “[t]ags 108 may also link up
with other information such as information associated with a user including .
. . psychographics and the like” (Maharajh ¶ 185). Thus, we agree with the
Examiner that Maharajh teaches psychographic tags.
Appellant’s argument that Maharajh does not teach that the
“psychographic tag is generated based on the ‘attribute or a structure of the
at least one of the respective plurality of titles’” (Appeal Br. 22) is also
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unpersuasive. The Examiner does not rely on Maharajh alone as teaching
the aforementioned limitation, but rather relies on Brunsman’s disclosure of
attributes of titles as teaching tags of those titles. The Specification supports
such a conclusion, explaining that “psychographic tags are attributes about
the title and how it is structured as to, inter alia, without limitation, what
emotions the title designed to appeal to.” Spec. ¶ 63. Thus, we agree with
the Examiner that Brunsman’s attributes are analogous to the claimed tags.
Appellant’s argument that “the ‘psychographics’ of Maharajh are not
related to the title of content but rather are ‘associated with a user’” (Appeal
Br. 22) attacks Maharajh individually and Appellant’s argument that
Brunsman selects titles based on text processing rules, rather than selecting
titles based on tags, attacks Brunsman individually. As explained above, the
Examiner finds Brunsman teaches selecting titles for content based on
attributes that are related to the title of content (Non-Final Act. 6; see also
Brunsman ¶ 70) and relies on Maharajh to teach that the tags associated with
content can include psychographic information. When Maharajh’s teachings
are applied to Brunsman, we agree with the Examiner that the combination
teaches selecting titles for content based on psychographic tags of the titles
of content as claimed.
In addition to the above arguments, Appellant also argues “Maharajh
never discloses any type of tag being ‘received’ by a server-side system in
the manner claimed. Rather, Maharajh focuses primarily on transmitting
tags to users.” Appeal Br. 24. To the extent Appellant’s argument is based
on the tag being received “by a server-side system” we find the argument
unpersuasive. As the Examiner points out, the claims as recited do not
require a tag to be received “by a server-side system.” As to the remainder
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of the argument, the Examiner finds Maharajh discloses that “a user may
request that the content manager . . . discover content with an album tag . . .
and deliver the content to a user’s device” (Ans. 11 (citing Maharajh ¶¶ 10,
176)) and that this disclosure teaches “receiving . . . a first request for a first
webpage including at least one received psychographic tag.” Appellant does
not address this finding in the Reply Brief and has therefore waived any
arguments to the contrary. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed.
Cir. 2008) (“When the appellant fails to contest a ground of rejection to the
Board, . . . the Board may treat any argument with respect to that ground of
rejection as waived.”). Accordingly, we do not find Appellant’s arguments
persuasive of Examiner error.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant does not make any arguments for separate patentability
of any of the other independent claims, nor of any of the dependent claims.
Thus, we sustain the Examiner’s rejections of independent claims 17 and 19,
and of dependent claims 2, 7, 10–16, 18, 20, and 21.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 7, 10–
20
101 Eligibility 1, 2, 7, 10–
20
1, 2, 7, 10,
16, 17, 18–
21
103 Brunsman,
Maharajh,
Olliphant
1, 2, 7, 10,
16, 17, 18–
21

11 103 Brunsman,
Maharajh,
Olliphant, Coyer
11
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12 103 Brunsman,
Maharajh,
Olliphant, Welsh
12
13, 14 103 Brunsman,
Maharajh,
Olliphant, Cox
13, 14
15 103 Brunsman,
Maharajh,
Olliphant, Chaikin
15
Overall
Outcome
1, 2, 7, 10–
21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2017).
AFFIRMED