Chalumeau Consulting Services, LLC

Patent Trials and Appeals Board

Jun 1, 2020

15292994 - (D) (P.T.A.B. Jun. 1, 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.
15/292,994 10/13/2016 William T. Semple 578713 4961
30955 7590 06/01/2020
LATHROP GPM LLP
2440 Junction Place
Suite 300
Boulder, CO 80301
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
patent@lathropgage.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM T. SEMPLE1
Appeal 2019-005680
Application 15/292,994
Technology Center 3600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
TAWEN CHANG, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for sending merchant alerts to a traveler, which have been rejected
as obvious and ineligible for patenting. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM the rejection for patent ineligibility.

1 Appellant identifies the real party in interest as Chalumeau Consulting
Services, LLC. Appeal Br. 4. We use the word Appellant to refer to
“applicant” as defined in 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
The Specification states that
merchants have not been able to take direct advantage of a
traveler while in motion to disseminate advertising particular to
a specific traveler based on the location of the traveler relative
to the merchant and dynamically responsive to the merchant’s
business needs, despite the advent of the smartphone and
related location-based technologies.
Spec. ¶ 3. The disclosed invention relates to “advertising and/or on-line
auction markets and more particularly to techniques for generating dynamic
auction advertising or buyer-seller auctions responsive to the locations of
travelers along a travel route relative to the locations of the
merchants/advertisers based primarily on the time of travel interval between
such locations.” Id. ¶ 2.
Claims 21–39 are on appeal. Claims 21 and 32, reproduced below, are
the independent claims and are illustrative:
21. A method for sending merchant alerts to a traveler, comprising:
receiving, at a traveler alert server and from a location aware device
(LAD), traveler preferences defining desires of the traveler
input into the LAD;
receiving, at the traveler alert server and from each of a plurality of
merchants one or more keyword bids defining information
about target travelers and an associated remaining travel time
(RTT) of the traveler to the respective merchant, each keyword
bid being associated with a bid amount;
determining, based upon current location data received at the traveler
alert server from the LAD as the traveler travels along a route, a
current remaining travel time (RTT) for the traveler to reach
each of the plurality of merchants;
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narrowing the plurality of merchants to a set of eligible merchants
based at least on the keyword bids and the current RTT to each
respective merchant;
generating a plurality of alerts based on a generalized second-price
(GSP) auction participated in by each of the eligible merchants
according to the keyword bids, each of the plurality of alerts
including the at least one message content and being ordered
based on the bid amount;
transmitting the ordered corresponding alerts to the LAD for display
to the traveler; and,
tracking the LAD in real-time as the traveler moves along a route to
transmit at least one different alert as the traveler’s RTT
changes.

32. A method for sending merchant alerts to a traveler, comprising:
receiving, at the traveler alert server and from a merchant, one or
more keyword bids defining information about target travelers
and an associated remaining travel time (RTT) of the traveler to
the merchant, each keyword bid being associated with a bid
amount;
generating a plurality of alerts based on a generalized second-price
(GSP) auction participated in by the merchant according to the
keyword bids, each of the plurality of alerts including the at
least one message content and being ordered based on the bid
amount;
transmitting the ordered corresponding alerts to the LAD for display
to the traveler; and,
tracking the LAD in real-time as the traveler moves along a route to
dynamically alter the message content in the alerts transmitted
to the LAD and from the merchant as the current RTT of the
traveler changes.

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The claims stand rejected as follows:
Claims 21–39 under 35 U.S.C. § 101 as patent ineligible (Non-Final
Action2 3):
Claims 21, 27, 31, 32, 35, and 37 under 35 U.S.C. § 103 as obvious
based on Tseng,3 Prada Gomez,4 and Gluhovsky5 (Non-Final Action 6);
Claim 22 under 35 U.S.C. § 103 as obvious based on Tseng, Prada
Gomez, Gluhovsky, and Wuersch6 (Non-Final Action 11);
Claims 23, 24, 33, and 34 under 35 U.S.C. § 103 as obvious based on
Tseng, Prada Gomez, Gluhovsky, and Chalk7 (Non-Final Action 11);
Claims 25 and 38 under 35 U.S.C. § 103 as obvious based on Tseng,
Prada Gomez, Gluhovsky, and Pradhan8 (Non-Final Action 13);
Claims 26 and 39 under 35 U.S.C. § 103 as obvious based on Tseng,
Prada Gomez, Gluhovsky, Pradhan, and Pradeep9 (Non-Final Action 13–
14);
Claim 28 under 35 U.S.C. § 103 as obvious based on Tseng, Prada
Gomez, Gluhovsky, and Monteforte10 (Non-Final Action 14);
Claim 29 under 35 U.S.C. § 103 as obvious based on Tseng, Prada
Gomez, Gluhovsky, and Labarca11 (Non-Final Action 15);

2 Office Action mailed August 27, 2018.
3 US 2016/0180394 A1; pub. June 23, 2016.
4 US 8,630,897 B1; iss. Jan. 14, 2014.
5 US 2014/0108160 A1; pub. Apr. 17, 2014.
6 US 2014/0156410 A1; pub. June 5, 2014.
7 US 2014/0122215 A1; pub. May 1, 2014.
8 US 2002/0160759 A1; pub. Oct. 31, 2002.
9 US 2011/0119129 A1; pub. May 19, 2011.
10 US 2010/0262449 A1; pub. Oct. 14, 2010.
11 US 2012/0095839 A1; pub. Apr. 19, 2012.
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Claim 30 under 35 U.S.C. § 103 as obvious based on Tseng, Prada
Gomez, Gluhovsky, and Official Notice (Non-Final Action 16); and
Claim 36 under 35 U.S.C. § 103 as obvious based on Tseng, Prada
Gomez, Gluhovsky, and Kratky12 (Non-Final Action 16).
OPINION
Eligibility
Claims 21–39 stand rejected under 35 U.S.C. § 101 on the basis that
they are “directed to an abstract idea . . . [and] do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception.” Non-Final Action 3. More specifically, the Examiner finds that
the “claims embody certain methods of organizing human activities directed
to advertising, marketing or sales activities or behaviors.” Ans. 17. The
Examiner also finds that,
[w]ith regard to the practical application test, the claims provide
the additional elements of a traveler alert server, location aware
device (LAD). The traveler alert server and LAD are recited at
a high level of generality and are only used to perform generic
computer functions. . . . Accordingly, the additional elements
do not integrate the abstract idea into a practical application
because it does not impose any meaningful limits on practicing
the abstract idea.
Id.
Appellant argues that “the claims provide significant improvement to
the technical field of electronic advertising both from a merchant perspective
and a traveler perspective.” Appeal Br. 22–23. Appellant argues that “[t]he

12 US 2003/0046158 A1; pub. Mar. 6, 2003.
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claims are not simply directed to targeted advertising based on travel time,
but instead are directed to a particular method for sending merchant alerts to
the traveler that solves a technical problem in the industry and using specific
hardware to do so.” Id. at 24.
Appellant argues that “the prior systems were ineffective because the
systems did not adequately meet the user’s desires, and ‘merchants are
unable to modify their message as the traveler approaches the merchant
location.’” Id. at 26 (quoting Spec. ¶ 4). According to Appellant, “[t]he
present claims resolve these technical problems by allowing the traveler to
define its desires, and allowing the merchant to respond to the traveler’s
preferences to adequately meet both the merchant and the traveler’s needs.”
Id. Appellant concludes that “the claims integrate any alleged abstract idea
into a practical application by improving the advertising platform technology
by allowing the participants in the advertising auctions to more efficiently
and effectively use the system, and thereby providing more pertinent and
relevant advertisements to the traveler.” Id.
Principles of Law
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. 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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
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nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“Revised Guidance”).13 “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1.
Under the Revised Guidance and the October 2019 Update, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).14
Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

13 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the Revised Guidance. USPTO,
October 2019 Update: Subject Matter Eligibility (the “October 2019
Update”) (available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
14 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Revised Guidance — Section III(A)(2), 84 Fed.
Reg. 54–55.
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(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.
Revised Guidance, 84 Fed. Reg. at 52–56.
Revised Guidance Step 2(A), Prong 1
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception. Claim 21 recites, among other steps, “receiving,
at a traveler alert server and from a location aware device (LAD), traveler
preferences defining desires of the traveler,” “receiving, at the traveler alert
server and from each of a plurality of merchants one or more keyword bids,”
“generating a plurality of alerts based on a generalized second-price (GSP)
auction participated in by each of the eligible merchants according to the
keyword bids,” and “transmitting the ordered corresponding alerts to the
LAD for display to the traveler.”
Claim 32 similarly recites “receiving, at the traveler alert server and
from a merchant, one or more keyword bids,” “generating a plurality of
alerts based on a generalized second-price (GSP) auction participated in by
the merchant according to the keyword bids,” and “transmitting the ordered
corresponding alerts to the LAD for display to the traveler.”
The Revised Guidance identifies “[c]ertain methods of organizing
human activity,” including “commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
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marketing or sales activities or behaviors; business relations)” as abstract
ideas. 84 Fed. Reg. at 52 (emphasis added). See also Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (The “claims are indeed
directed to an abstract idea, which is . . . a method of using advertising as an
exchange or currency.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir. 2015) (“[T]he claims are directed to the concept of
offer-based price optimization. . . . [T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
Here, the steps of receiving preferences from a traveler, receiving
keyword bids from merchants, generating alerts based on a generalized
second-price auction based on the keyword bids, and transmitting the alerts
for display on a traveler’s location-aware device (LAD) are expressly
directed to advertising and sales (auction) activities; specifically, sales and
display of advertising to a traveler based on preferences that the traveler
inputs into the LAD. See Spec. ¶ 2 (“The present disclosure is related
generally to advertising and/or on-line auction markets and more particularly
to techniques for generating dynamic auction advertising or buyer-seller
auctions responsive to the locations of travelers along a travel route relative
to the locations of the merchants/advertisers.”).
Thus, claims 21 and 32 recite advertising and sales activities, which
are methods of organizing human activity within the categories of abstract
ideas that have been identified by the courts. We agree with the Examiner
that claims 21 and 32 recite an abstract idea.
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Revised Guidance Step 2(A), Prong 2
Although the claims recite an abstract idea, they would still be patent-
eligible if “the claim as a whole integrates the recited judicial exception into
a practical application of the exception”; i.e., if the claim “appl[ies], rel[ies]
on, or use[s] the judicial exception in a manner that imposes a meaningful
limit on the judicial exception.” 84 Fed. Reg. at 54. The analysis of whether
the claim integrates the judicial exception into a practical application
includes “[i]dentifying whether there are any additional elements recited in
the claim beyond the judicial exception(s)” and “evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” Id. at 54–55.
The exemplary considerations indicating that an additional element
may integrate an exception into a practical application include “[a]n
additional element [that] reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Id. at
55. However, “[a]n additional element . . . [that] merely includes instructions
to implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea” is an indication that “a judicial exception
has not been integrated into a practical application.” Id.
Here, in addition to the steps that are expressly directed to advertising
and sales activities, claim 21 also recites the steps of “determining . . . a
current remaining travel time (RTT) for the traveler to reach each of the . . .
merchants,” “narrowing . . . the merchants to a set of eligible merchants
based at least on the keyword bids and the current RTT,” and “tracking the
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LAD in real-time as the traveler moves.” Claim 32 also recites “tracking the
LAD in real-time as the traveler moves.”
Thus, in addition to the abstract sales and advertising activities recited
in the claims, these steps add the concept of basing the sale of advertising
not only on traveler preferences input into an LAD but also on the distance
between the traveler and a merchant (as reflected in the remaining travel
time (RTT) of the traveler to the merchant).
Appellant argues that this aspect of the claims “allow[s] the merchant
to modify its advertisements based on the real-time location of the traveler.
As such, the claimed auction system allows the merchant the ability to
efficiently spend bidding resources and to deliver appropriate messages to
the traveler that increase effectiveness of the computer-based advertising
technology.” Appeal Br. 26. Appellant argues that “[t]he claims are not
simply directed to targeted advertising based on travel time, but instead are
directed to a particular method for sending merchant alerts to the traveler
that solves a technical problem in the industry and using specific hardware
to do so.” Id. at 23. Thus, Appellant argues, “the claims integrate any alleged
abstract idea into a practical application by improving the advertising
platform technology by allowing the participants in the advertising auctions
to more efficiently and effectively use the system, and thereby providing
more pertinent and relevant advertisements to the traveler.” Id. at 26.
We conclude, however, that the elements of the claims that require
determining and using a traveler’s remaining travel time (RTT) do not
reflect an improvement in a technical field. These steps of the claims are
recited purely in terms of results, without any implementation details.
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Neither the claims nor the Specification recite any specific technical
requirements for determining or tracking the location of an LAD or
determining a remaining travel time (RTT) of a traveler with respect to a
specific merchant. Rather, the Specification states:
Locator technology 130 is embedded in LAD 110 and
may be used to locate LAD 110 in conjunction with location
data 132, and may be implemented as one or more of GPS, Wi-
Fi, assisted global positioning (A-GPS), GSM localization,
control plane locating (e.g., cellular triangulation), self-reported
positioning, beacons, Bluetooth, long term evolution (LTE)
employing observed time difference of arrival (OTDA), and
other location-based technologies known to artisans of ordinary
skill. Location techniques used by locator technology 130 may
include network-based, device-based, SIM-based, IP lookup,
and hybrids thereof. Alternatively, locator technology 130 may
be used in conjunction with networked location data 132 to
determine the location of LAD 110 indirectly, for example by
using one or more of Wi-Fi positioning, including public Wi-Fi
access location databases, Wireless Intrusion Prevention
System (WiPS), or other similar location-based technology
wherein such location is supplied to the traveler alert server 140
via network 104 and/or to third-party map/route/navigation data
database 170 via network 103.
Locator technology 130 may transmit the location (e.g.,
latitude/longitude) of LAD 110 via network 105 to traveler alert
server 140, which may utilize the received location in
conjunction with map data server 144 and/or external
map/route/navigation data database 170 to determine the
location of the LAD 110. In one embodiment, locator
technology 130 transmits the location of LAD 110 via network
103 to third-party map/route/navigation data database 170,
which in turn provides traveler alert server 140 with the
location of LAD 110.
Spec. ¶¶ 52–53 (emphasis added). The Specification thus makes clear that
Appellant’s invention does not lie in improving any technical aspect of
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determining the location of an LAD, which can be performed by a third
party using any existing technologies and techniques.
With regard to the step of “determining . . . a current remaining travel
time (RTT) for the traveler to reach each of the . . . merchants,” the
Specification states that
ETA/RTT resolver 143 determines an estimated RTT 154 of
LAD 110 (i.e., the automobile) to reach merchant location 162
based on one or more locations (i.e., automobile location 156)
received from one or more of LAD 110, location data 132,
map/route/navigation data database 170, and map data server
144, that locate the automobile along known, estimated or
hypothetical route 152, based upon a road defined . . . by map
data server 144, and a location of merchant location 162, which
is proximate route 152.
Spec. ¶ 55. The Specification also states that “ETA/RTT resolver
determin[es] the remaining time of travel based the location, speed, speed
limit, and other factors affecting the calculation.” Id. ¶ 96.
The Specification does not provide any further details about how the
ETA/RTT resolver determines the remaining travel time (RTT) of an LAD
with respect to a specific merchant.
In short, the Specification does not describe any specific method for
determining the location of an LAD or of calculating the remaining travel
time of the LAD to a merchant. Because the Specification does not describe
any of the technical details for these elements of the claims, these elements
do not reflect a technical improvement in a method of generating, selling,
and displaying advertising to a traveler. Rather, they merely require an
additional criterion—remaining travel time—to be considered, along with
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one or more keywords expressing preferences, in determining which
advertisements to transmit for display to a traveler.
Claim 21 also states that the claimed method involves “a traveler alert
server” and “a location aware device (LAD).” Claim 32 similarly recites a
“traveler alert server” and an “LAD” (presumably a location aware device,
although it is not defined as such in the claim). With respect to these claim
elements, we agree with the Examiner that “[t]he traveler alert server and
LAD are recited at a high level of generality and are only used to perform
generic computer functions.” Ans. 17.
The Specification makes clear that both the traveler alert server and
the location aware device required by the claims are generic computing
devices. The Specification states that “LAD 110 may represent one or more
of a smartphone, a smart watch, a cellular phone, a personal digital assistant,
a tablet, a laptop, an in-dash interactive navigation device, and a portable
interactive navigation device.” Spec. ¶ 49. With regard to the traveler alert
server, the Specification states that the
traveler alert server . . . includes at least one processor; a
memory; a merchant locations system login (MLSL) for
receiving . . . at least one keyword bid . . . ; an auction server
for performing a generalized second-price (GSP) auction . . . ;
an alert generator for sending the ordered alerts to the LAD for
display to the traveler; and a transaction module for receiving
an input indicating selection of one of the ordered alerts by the
traveler.
Id. ¶ 18. “Traveler alert server 140 may include a database.” Id. ¶ 54.
Therefore, both the recited traveler alert server and location aware
device (LAD) are recited at a high level of generality and are used to
perform generic functions for that type of device. The generic computing
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devices recited in the claims do not reflect an improvement in the
functioning of a computer, or an improvement to another technical field.
Rather, the generic computing devices merely implement the recited
advertising and sales activity on a computer. They therefore do not integrate
the recited judicial exception into a practical application.
In summary, claims 21 and 32 recite an abstract idea and does not
integrate it into a practical application. Claims 21 and 32 are therefore
directed to a judicial exception to patentability.
Revised Guidance Step 2(B)
Finally, the Revised Guidance directs us to consider whether the
claims include “additional elements . . . [that] provide[] ‘significantly more’
than the recited judicial exception.” 84 Fed. Reg. at 56. The Revised
Guidance states that an additional element that “simply appends well-
understood, routine, conventional activities previously known in the
industry, specified at a high level of generality, to the judicial exception, . . .
is indicative that an inventive concept may not be present.” Id.
As discussed above, and aside from the steps that are expressly
directed to advertising and sales activities, claims 21 and 32 recite “tracking
the LAD in real-time,” and claim 21 also recites the steps of “determining
. . . a current remaining travel time (RTT) for the traveler to reach each of
the . . . merchants” and “narrowing . . . the merchants to a set of eligible
merchants based at least on the keyword bids and the current RTT.”
However, as also discussed above, the Specification does not disclose
any technical details for performing these functions, and also makes clear that
they require only conventional smartphones and computer servers. See Spec.
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¶¶ 18, 49, 52–55, 96 (quoted above); see also id. ¶ 121 (“The integrated
capabilities of an operating system (e.g., Apple iOS, Google Android, and
Microsoft Windows) of smartphone 910 are known to artisans of ordinary
skill and meet all of the input, output, and locational requirements of LAD
110.”).
Thus, the claims themselves do not require any unconventional
computer configuration or software, nor does the Specification describe any
unconventional computer implementation as part of the claimed method.
Thus, claims 21 and 32 require using only a generic computer system and a
generic location aware device (e.g., a smartphone) to carry out the claimed
process, and “the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.” Alice Corp.
v. CLS Bank Int’l, 573 U.S. 208, 223 (2014).
In summary, the combination of elements recited in the methods of
both claim 21 and claim 32 does not amount to significantly more than the
judicial exception itself, and under 35 U.S.C. § 101 the claimed methods are
ineligible for patenting.
Appellant’s Arguments
Appellant argues that “the claims provide significant improvement to
the technical field of electronic advertising.” Appeal Br. 22–23. Appellant
argues that the claims “are directed to a particular method for sending
merchant alerts to [a] traveler that solves a technical problem in the
industry.” Id. at 24. Specifically, “the prior systems were ineffective because
the systems did not adequately meet the user’s desires, and ‘merchants are
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unable to modify their message as the traveler approaches the merchant
location.” Id. at 26 (quoting Spec. ¶ 4).
Appellant argues that tracking the location of an LAD in real-time, as
claimed, “allow[s] the merchant to modify its advertisements based on the
real-time location of the traveler,” which “allows the merchant the ability to
efficiently spend bidding resources and to deliver appropriate messages . . .
that increase effectiveness of the computer-based advertising technology.”
Id. Appellant argues that “[i]t is this claimed ability—to track an LAD in
real-time for the purpose of modifying message/alert content—that is
afforded by the claimed combination of features as a whole that provides an
inventive concept and is thus patent eligible.” Reply Br. 30.
We do not agree that tracking the location of an LAD in real-time, and
using the locations to determine what advertising to send to a potential
customer, constitutes an “improvement to [a] technology or technical field”
that would indicate that an abstract idea had been integrated into a practical
application. See Revised Guidance, 84 Fed. Reg. at 55. As discussed above,
the claims do not require, and the Specification does not describe, any
technical capabilities of either the traveler alert server or the LAD that are
not possessed by computers and smartphones in common use at the time the
application was filed. The claims therefore do not reflect an improvement to
any technical field.
Rather than being an improvement to a technical field, the
improvement relied on by Appellant is an improvement in a method of
advertising goods and services. An improvement in the abstract idea to
which the claims are directed is not a basis for holding them eligible for
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patenting. See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163
(Fed. Cir. 2018) (“The claims here are ineligible because their innovation is
an innovation in ineligible subject matter. . . . [T]he advance lies entirely in
the realm of abstract ideas, with no plausibly alleged innovation in the
nonabstract application realm. An advance of that nature is ineligible for
patenting.”).
In addition, tailoring advertising based on a consumer’s location is not
an inventive concept. The Specification, for example, describes one example
that predates smartphone technology: “the ‘South of the Border’ signs along
U.S. 95 which became more intense and creative as the traveler approached
the exit to the tourist attraction.” Spec. ¶ 5. See also Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015):
[T]ailoring content based on the viewer’s location or address
. . . is ‘a fundamental . . . practice long prevalent in our
system. . . .’ There is no dispute that newspaper inserts had
often been tailored based on information known about the
customer—for example, a newspaper might advertise based on
the customer’s location.
(Quoting Alice, 573 U.S. at 219, modifications to Alice quotation in
original.)
For the reasons discussed above, we affirm the rejection of claims 21
and 32 under 35 U.S.C. § 101. Claims 22–31 and 33–39 fall with claims 21
and 32 because they were not argued separately.

Obviousness
Claims 21, 27, 31, 32, 35, and 37 stand rejected as obvious based on
Tseng, Prada Gomez, and Gluhovsky. The Examiner finds that Tseng
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teaches most of the limitations of independent claims 21 and 32, but does
not teach “evaluating a set of rules to generate bids based on travel time,”
which is taught by Prada Gomez, and does not teach “ordering
advertisements by a generalized second-priced auction,” which is taught by
Gluhovsky. Non-Final Action 7.
More specifically, the Examiner finds that “Tseng teaches a method
for sending merchant alerts to a traveler comprising: receiving, at
traveler alert server and from a location aware device (LAD), traveler
preferences defining desires of the traveler input into the LAD.” Id. at 6,
citing Tseng ¶¶ 16, 17, 20–22, 31–33, 41, 43. The Examiner also finds that
Tseng teaches “tracking the LAD in real-time as the travel moves along a
route to transmit at least one different alert as the travelers’s [sic] RTT
changes.” Id. at 7, citing Tseng ¶¶ 22, 43, 44.
Appellant argues that “[t]he cited art does not teach (or suggest)
traveler preferences input into the LAD defining desires of the traveler.”
Appeal Br. 12. Appellant argues that the cited portions of Tseng only teach
“matching target individuals to a single merchant using social network
profiles of the advertisement targets that may include demographic type
information.” Id. “However, the claimed ‘traveler preferences’ are not
simply social network profiles such as those taught by Tseng.” Id. Rather,
“[u]nder this limitation, the traveler must ‘input’ traveler preferences into the
LAD for the traveler alert system to determine what merchants are nearby
and that meet the immediate needs and/or desires of the traveler.” Id.
Appellant argues that the Specification distinguishes “traveler
preferences” and “traveler profiles” as distinct from each other. Id. at 12–13.
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Appellant quotes the Specification’s statement that traveler preferences
“generally reflect the current desires of the traveler as manually inputted
into the LAD,” whereas “[t]raveler profiles 142 supplements [sic] traveler
preferences 122a . . . [and] is dynamically updated with information as
received directly and indirectly from all sources in real time, including the
cloud.” Id. (quoting Spec. ¶¶ 54, 79).
We agree with Appellant that the Examiner has not shown that Tseng
teaches or would have made obvious the limitation of claim 21 requiring
“receiving, at a traveler alert server and from a location aware device
(LAD), traveler preferences defining desires of the traveler input into the
LAD.”
Regarding this limitation, the Examiner relies on the following
disclosure in Tseng:
Each user of the social networking system 140 is associated
with a user profile, which is stored in the user profile store 205.
A user profile includes declarative information about the user
that was explicitly shared by the user and may also include
profile information inferred by the social networking system
140. Examples of information stored in a user profile include
biographic, demographic, and other types of descriptive
information, such as work experience, educational history,
gender, hobbies or preferences, location, and the like.
Non-Final Action 6 (quoting Tseng ¶ 21).
Claim 21, however, recites “traveler preferences defining desires of
the traveler.” We agree with Appellant that generalized “descriptive
information, such as work experience, educational history, gender, hobbies
or preferences, location, and the like,” Tseng ¶ 21, does not meet the
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broadest reasonable interpretation of the disputed limitation when read in
light of the Specification.
The Specification states, for example, that “[t]raveler preferences . . .
generally reflect the current desires of the traveler.” Spec. ¶ 79. The
Specification also states that traveler preferences “may include products,
services, prices, persons, topics of interest, mode of travel, preferred
estimated time of arrival (ETA), and maximum deviation from route.” Id.
As Appellant has pointed out, the Specification expressly
distinguishes between “traveler preferences,” as recited in the claims, and
“traveler profiles.” See, e.g.¸ id. ¶ 77. In contrast to “traveler preferences,”
which are “manually inputted into the LAD,” id. ¶ 79, the “traveler profile
data (i.e., traveler profiles 142) . . . is generally gleaned from indirect
sources, e.g., cloud data that can be retrieved to determine a traveler’s travel
habits, purchasing history, and personal tastes and stored in the traveler
profile.” Id. ¶ 80.
We therefore agree with Appellant that Tseng’s disclosure of user
profiles does not teach “traveler preferences defining desires of the traveler,”
as recited in claim 21. The Examiner reasons that “[n]othing in the cited
paragraph imposes any limitation what so ever on preferences and whether
they are ‘current’ or not is irrelevant in the fact that the actual claim
language does not include ‘current’ desires.” Ans. 9. However, while claim
21 does not recite “current desires,” when the claim is read in light of the
Specification, “traveler preferences defining desires of the traveler” is most
reasonably interpreted to mean desires of the traveler while traveling, not
only based on the description of “preferences” discussed above, but also
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because the invention is described as a method of dynamically adjusting the
messages that are sent to a traveler “as the traveler moves along the route.”
Spec. ¶ 8.
In summary, we conclude that the Examiner has not shown that the
cited references teach or would have made obvious the limitation of claim
21 requiring “traveler preferences defining desires of the traveler input into
the LAD.” We therefore reverse the rejection of claim 21, and dependent
claims 27 and 31, under 35 U.S.C. § 103 based on Tseng, Prada Gomez, and
Gluhovsky.
Claim 32 does not recite “receiving . . . traveler preferences defining
desires of the traveler.” However, claim 32 does require “tracking the LAD
in real-time as the traveler moves along a route to dynamically alter the
message content in the alerts transmitted to the LAD and from the merchant
as the current RTT of the traveler changes.”
Appellant argues that “Tseng teaches a system based on social
network platforms that identifies potential targets for selected
advertisements.” Appeal Br. 9.15 Appellant argues that “Tseng selects an
advertisement, and then identifies potential recipients for the advertisement
based on a geo-fence like threshold proximity to a location of a physical
entity associated with the advertisement.” Id. at 10. “Even if Tseng’s entire

15 These arguments are presented with respect to claim 21. However,
Appellant notes that claim 32 includes a similar limitation and incorporates,
with respect to claim 32, the arguments made with respect to claim 21.
Appeal Br. 19.
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process repeats, it is not doing so to track the user’s change in location as the
present invention requires.” Id. That is, Appellant argues,
[e]ven if Tseng’s process is repeated, Tseng does not “track[]
the LAD in real-time” as required by the claims. The present
invention receives “current location data . . . at the traveler alert
server from the LAD as the traveler travels along a route”. In
contrast, the geographic information received in Tseng is static
and draws the geographic information from a social network,
rather than the real-time geographic location of an LAD.
Id. at 11.
We agree with Appellant that the Examiner has not shown that Tseng
teaches or would have made obvious the limitation of claim 32 requiring
“tracking the LAD in real-time as the traveler moves along a route to
dynamically alter the message content . . . as the current RTT of the traveler
changes.” The Examiner cites Tseng’s paragraphs 22, 43, and 44 as teaching
that “[t]he traveler[’]s location is determined by the user’s device. As the
user[’]s location changes they are exposed to different ads based on being
within a proximity to advertiser locations.” Non-Final Action 7. The
Examiner reasons that “[i]n [I]n re Harza, 274 F.2d 669, 124 USPQ 378
(CCPA 1960), the courts held that mere duplication of parts has no
patentable significance unless a new and unexpected result is produced. As
the claim merely repeats the steps as the user’s location changes, the
limitation has little to no patentable weight.” Id.
We do not agree with the Examiner’s reasoning. Tseng discloses that
a “user profile includes a current physical location of the user, which may be
received or otherwise obtained from a client device 110 associated with the
user, as well as one or more prior locations of the user.” Tseng ¶ 22. Tseng
also discloses “determin[ing] physical locations of entities that are in
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proximity to a physical location of the user’s client device and that are
associated with ad requests.” Id. ¶ 43. And Tseng discloses that “the location
module 310 determines a time for the user to travel from a physical location
associated with the client device 110 to a physical location associated with
an entity (a ‘travel time’).” Id.
However, Tseng does not disclose tracking the location of a traveler in
real-time as the traveler moves along a route, in a way that would enable
altering the content of messages being transmitted as the traveler’s current
location (or RTT) changes, as required by claim 32. Tseng merely discloses
that the current location of a user, and proximity to a merchant entity, can be
used to determine an ad to display. Tseng also discloses that prior locations
of the user, along with current location, can be included in the user’s profile,
but the Examiner has not pointed to any disclosure in Tseng of tracking a
user’s location in real-time as the traveler moves along a route.
We do not agree that the disputed limitation is analogous to the issue
in In re Harza, where the invention was “a water stop fabricated of a
relatively flexible material such as polyvinyl chloride. It consists of an
elongated web having a plurality of ribs on each side integral therewith.”
Harza, 274 F.2d at 670. (A water stop “fills the gap which forms between
adjacent pours of concrete in dams, swimming pools, reservoirs, etc.” Id.)
The prior art reference “show[ed] only a single rib on each side of the web.”
Id. at 671.
Thus, in Harza, the claimed and prior art structures, although
structurally distinguishable, performed precisely the same function of
preventing water from leaking through the gaps between adjacent pieces of
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concrete. In the present claims, however, the real-time tracking of a
traveler’s location enables “dynamically alter[ing] the message content in
the alerts transmitted to the LAD” based on changes in the traveler’s
location (and RTT to a merchant). The rule announced in Harza—“the mere
duplication of parts has no patentable significance unless a new and
unexpected result is produced,” 274 F.2d at 670—does not apply to the facts
of this case.
For the reasons discussed above, we reverse the rejection of claims 21
and 32, and dependent claims 27, 31, 35, and 37, under 35 U.S.C. § 103
based on Tseng, Prada Gomez, and Gluhovsky.
The Examiner has rejected claims 22–26, 28–30, 33, 34, 36, 38, and
39 under 35 U.S.C. § 103 based on Tseng, Prada Gomez, and Gluhovsky,
further combined with one or more of Wuersch, Chalk, Pradhan, Pradeep,
Monteforte, Labarca, Official Notice, or Kratky. Each of these rejections,
however, relies on the Examiner’s findings with regard to the independent
claims. See Non-Final Action 11–17. The Examiner has not pointed to any
teachings in the additional references that make up for the deficiencies in
Tseng that are discussed above. We therefore reverse the remaining § 103
rejections for the reasons discussed above with respect to claims 21 and 32.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–39 101 Eligibility 21–39
21, 27, 31,
32, 35, 37
103 Tseng, Prada Gomez,
Gluhovsky
21, 27, 31,
32, 35, 37
22 103 Tseng, Prada Gomez,
Gluhovsky, Wuersch
22
23, 24, 33,
34
103 Tseng, Prada Gomez,
Gluhovsky, Chalk
23, 24, 33,
34
25, 38 103 Tseng, Prada Gomez,
Gluhovsky, Pradhan
25, 38
26, 39 103 Tseng, Prada Gomez,
Gluhovsky, Pradhan,
Pradeep
26, 39
28 103 Tseng, Prada Gomez,
Gluhovsky, Monteforte
28
29 103 Tseng, Prada Gomez,
Gluhovsky, Labarca
29
30 103 Tseng, Prada Gomez,
Gluhovsky, Official
Notice
30
36 103 Tseng, Prada Gomez,
Gluhovsky, Kratky
36
Overall
Outcome
21–39
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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).
AFFIRMED