Chris W. Higgins et al.

Patent Trials and Appeals Board

Oct 31, 2019

12493778 - (D) (P.T.A.B. Oct. 31, 2019)

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.
12/493,778 06/29/2009 Chris W. Higgins 12729-1059 (Y04956US00) 9984
149109 7590 10/31/2019
BGL/Excalibur
P.O. Box 10395
Chicago, IL 60610
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
10/31/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRIS W. HIGGINS, ATHELLINA ATHSANI,
CARRIE BURGENER, MARC DAVIS, SIMON P. KING, RAHUL NAIR,
and CHRISTOPHER T. PARETTI

___________

Appeal 2018-004113
Application 12/493,778
Technology Center 3600
____________

Before ERIC B. CHEN, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 6, 11, 13, 16, 21, 24, and 28–39.
Claims 2, 4, 5, 7–10, 12, 14, 15, 17–20, 22, 23, and 25–27 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to targeting specific users with specific
requested actions to be performed by the user and verified by any methods
on behalf of an advertiser within an Internet display advertising campaign.
(Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with disputed limitations in italics:
1. A method for increasing user interaction in a cost-per-
action advertising campaign, the method comprising:
[i] receiving, by a cost-per-action engine, a request from an
advertiser for at least one action in an ad campaign data record, the
request comprising an identification of the action and terms and
conditions of the action;
[ii] identifying, by the cost-per-action engine, available sensors
for verifying satisfaction of the terms and conditions of the action;
[iii] receiving, by the cost-per-action engine from at least one of
the available sensors, a data stream related to the satisfaction of the
terms and conditions of the action by a user;

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 Excalibur
IP, LLC of Sunnyvale, California. (App. Br. 2.)
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[iv] calculating, by the cost-per-action engine, a confidence
score comparing the received data stream to an expected data stream;
[v] determining, by the cost-per-action engine, whether the
confidence score is above a threshold;
[vi] responsive to the confidence score being above the
threshold, confirming the accomplishment of the requested action and
rewarding the user; and
[vii] responsive to the confidence score being lower than the
threshold, performing additional processing for verifying the
accomplishment of the requested action.

REFERENCES
Name Reference Date
Goldhaber et al. US 5,855,008 Dec. 29, 1998
Popowich et al. US 2008/0172781 Al July 24, 2008
Ramer et al. US 2009/0240568 Al Sept. 24, 2009
Monteforte et al. US 2010/0262464 Al Oct. 14, 2010

REJECTIONS
Claims 1, 3, 6, 11, 13, 16, 21, 24, and 28–39 stand rejected under 35
U.S.C. § 101 as directed to patent-ineligible subject matter.
Claims 1, 3, 6, 11, 13, 16, 21, 24, and 28–39 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Ramer, Monteforte, Popowich,
and Goldhaber.

OPINION
§ 101 Rejection
We are unpersuaded by Appellant’s arguments (App. Br. 4–12) that
independent claims 1, 11, and 21 are directed to patent-eligible subject
matter under 35 U.S.C. § 101.
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The Examiner determined that independent claim 1, 11, and 21 “are
rejected 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., Alice].” (Ans. 3.) In particular, the
Examiner determined that “[t]he focus of the asserted claims, as illustrated
by the claims, is on collecting information, analyzing it, displaying certain
results of the collection and analysis and sending instruction to implement
result” (id. at 5) with citations to Electric Power Group (id. at 7) and
Digitech Image Technologies (id. at 6). Furthermore, the Examiner
determined that “the claim limitations in addition to the abstract idea include
a computer application running on a computer and the computer network,”
which “is simply a generic recitation of a computer and a computer network
performing their basic functions.” (Final Act. 3.) We agree with the
Examiner’s determinations and ultimate conclusion that the claims are
directed to patent-ineligible subject matter.
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
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step 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
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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 (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
Supreme 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 176; 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
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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 (citation 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 PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019
Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019). Under
that guidance, 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
2019)).
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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 to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are 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 84 Fed. Reg. 56.

Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claim 1 is a method claim, which falls within the “process” category
of 35 U.S.C. § 101. Likewise, claim 11 is a system claim, which falls within
the “manufacture” category of 35 U.S.C. § 101, and claim 21 is a computer-
readable medium claim, which also falls within the “manufacture” category
of 35 U.S.C. § 101. Therefore, claims 1, 11, and 21 fall within one of the
four statutory categories of patentable subject matter identified by 35 U.S.C.
§ 101.
Although claims 1, 11, and 21 fall within the statutory categories, we
must still determine whether these claims are directed to a judicial
exception, namely an abstract idea. See Alice, 573 U.S. at 217–18. Thus,
we must determine whether the claims recite a judicial exception, and fail to
integrate the exception into a practical application. See 84 Fed. Reg. 54–55.
If both elements are satisfied, the claims are directed to a judicial exception
under the first step of the Alice/Mayo test. See id.
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Step 2A, Prong One
Independent claim 1 is a method claim, and includes the following
limitations: “[i] receiving . . . a request from an advertiser for at least one
action in an ad campaign data record, the request comprising an
identification of the action and terms and conditions of the action” and “[ii]
verifying satisfaction of the terms and conditions of the action,” which recite
a patent-ineligible abstract idea of certain methods of organizing human
activity, such as marketing or sales activities. See e.g., Alice, 573 U.S. at
219–20 (a “fundamental economic practice” is an abstract idea). In
particular, in the “Background” section, Appellant’s Specification
acknowledges that “in online display advertising, advertisers may wish to
target broad consumer segments (e.g. California consumers) or specific
consumer sub-segments” (Spec. 2:1–2) and “certain segments of the user
population often provide word-of-mouth advocacy for an advertiser or
publisher” (Spec. 2:6–7).
Moreover, claim 1 recites: “[iii] receiving . . . a data stream related to
the satisfaction of the terms and conditions of the action by a user,” “[iv]
calculating . . . a confidence score comparing the received data stream to an
expected data stream,” “[v] determining . . . whether the confidence score is
above a threshold,” “[vi] responsive to the confidence score being above the
threshold, confirming the accomplishment of the requested action and
rewarding the user,” and “[vii] responsive to the confidence score being
lower than the threshold, performing additional processing for verifying the
accomplishment of the requested action.” Such limitations of claim 1 recite
a patent-ineligible abstract idea of mental processes, such as collecting and
analyzing information. See e.g., Elec. Power Grp., 830 F.3d at 1354 (“[t]he
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advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.”).
Alternatively, such limitations of claim 1 are directed to a patent-ineligible
abstract idea of mathematical concepts, such as mathematical calculations.
See Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014) (“Without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.”) In particular,
claim 1 recites “[iv] calculating . . . a confidence score comparing the
received data stream to an expected data stream” and “[v] determining . . .
whether the confidence score is above a threshold,” which is based upon
previously gathered information, the recited “data stream.”
Accordingly, claim 1 recites a judicial exception. Claims 11 and 21
recite limitations similar to those discussed with respect to claim 1. Thus,
claims 11 and 21 also recite a judicial exception.

Step 2A, Prong Two
Because claims 1, 11, and 21 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
Claim 1 recites: “[i] receiving, by a cost-per-action engine, a request
from an advertiser,” “[ii] identifying, by the cost-per-action engine,
available sensors for verifying satisfaction of the terms and conditions of the
action,” “[iii] receiving, by the cost-per-action engine from at least one of
the available sensors, a data stream,” “[iv] calculating, by the cost-per-action
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engine, a confidence score,” and “[v] determining, by the cost-per-action
engine, whether the confidence score is above a threshold” (emphases
added).
The recited computer hardware, including the “cost-per-action
engine” and “sensors,” are merely tools for performing the abstract idea.
See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“[T]he
claims are directed not to an improvement in cellular telephones but simply
to the use of cellular telephones as tools in the aid of a process focused on an
abstract idea.”).
Accordingly, claim 1 does not recite additional elements that integrate
the judicial exception into a practical application. Claims 11 and 21 recite
similar limitations.

Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claim 1, 11, and 21 are directed to a judicial exception, we
next determine, according to Alice, whether these claims recite an element,
or combination of elements, that is enough to ensure that the claim is
directed to significantly more than a judicial exception.
Claim 1 is a method claim, which includes “a cost-per-action engine”
and “sensors.” Likewise, system claim 11 and computer readable claim 21
recite “a computer processor” or “processors,” respectively.
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With respect to the claimed hardware components, of a “cost-per-
action engine,”2 “sensors,” and “computer processor,” Appellant’s
Specification discloses the following:
The cost-per-action engine 110 may include, without
limitation, a targeting engine 150, a sensor log engine 155, a
compensation engine 160 and/or a database of databases 135.
(Spec. 16:9–12.)
FIG. 1C is a schematic showing data communications
within a cost-per-action system, in accordance with some
embodiments. As shown, FIG. 1C depicts an embodiment of a
CPA [cost-per-action] engine, in particular including interaction
with devices and databases. In the abstraction as shown, the
CPA engine 110 communicates with a computer 145, and or
any one or more mobile devices including, without limitation, a
cellphone 1491, a vehicle, 1492, a mobile terminal 1493, a
billboard 1494, and/or any arbitrary device or sensor 1490
whether mobile or not.
(Spec. 18:16–25.)
“Sensor” means any device capable of directly or
indirectly reporting some movement, behavior or event or any
changes of any sort in any environment. Multiple sensors may
be combined to form sensing networks.
(Spec. 8:21–23.)
The system performs an ID verification test on James and
Jane (e.g. mobile device registered to the members; and/or
image/audio/video recognition through photo/audio/video
capture compared against member database). The system is
able to track that James allowed Jane to drive the car by
tracking James’ and Jane’s GPS coordinates. The system can
recognize Jane through her registered profile such as her
unique Bluetooth ID or RFID. The system can also opt to

2 One relevant technical definition of “engine” is “[a] processor . . . that
determines how the program manages and manipulates data.” MICROSOFT®
COMPUTER DICTIONARY 193 (5th ed. 2002).
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authentic Jane’s and James’ presence/action by their biometric
login, etc.
(Spec. 29:6–11 (emphases added).)
Portions of some embodiments may be conveniently
implemented by using a conventional general purpose or a
specialized digital computer.
(Spec. 62:14–15 (emphases added).)
The computer system 500 includes a processor 502, a
main memory 504 and a static memory 506, which
communicate with each other via a bus 508. The computer
system 500 may further include a video display unit 510 (e.g. a
liquid crystal display or a cathode ray tube). The computer
system 500 also includes an alphanumeric input device 512
(e.g. a keyboard), a cursor control device 514 (e.g. a mouse), a
disk drive unit 516, a signal generation device 518 (e.g. a
speaker), and a network interface device 520.
(Spec. 63:4–9 (emphasis added).)
The generalized functional terms by which the computer components
are described reasonably indicate that Appellant’s Specification discloses:
(i) conventional CPA engine 110, having targeting engine 150, sensor log
engine 155, compensation engine 160, or databases 135, such the CPA
engine 155 communicates with other conventional hardware (e.g., computer
145, cellphone 1491, vehicle, 1492, mobile terminal 1493, or billboard 1494);
(ii) conventional sensors, defined as any device capable of directly or
indirectly reporting some movement (e.g., photo/audio/video capture, GPS,
Bluetooth ID, or RFID); and (iii) conventional computer system 500 having
conventional processor 502.
In view of Appellant’s Specification, the claimed hardware
components, including a “cost-per-action engine,” “sensors,” and “computer
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processor” reasonably may be determined to be generic, purely conventional
computer elements.
Thus, claims 1, 11, and 21 do no more than require generic computer
elements to perform generic computer functions, rather than improve
computer capabilities.
First, Appellant argues:
the pending claims are directed to a specific set of technological
features for solving a particular set of Internet-centric problems
relating to the challenge of monitoring and rewarding specific
targeted users for their online interactions with digital media
presented on a website or other interactive media presentation
within a networked environment
(App. Br. 4.) In particular, Appellant argues:
Much like the self-referential table described by the
claims at issue in Enfish, the pending claims recite to a “data
stream” used to improve the accuracy with which a cost-per-
action engine is able to calculate whether a user’s online actions
satisfy terms and conditions of an advertiser’s requested online
action, and rewarding the user accordingly.
(Id. at 7.) However, Appellant have not adequately explained why the claim
“purport[s] to improve the functioning of the computer itself” or “any other
technology or technical field.” Alice, 573 U.S. at 225. In particular,
Appellant has not explained why the claimed “data stream,” which is merely
the collection of information, improves the function of a computer or other
technology. Moreover, any improved accuracy is derived solely from the
capabilities of a general-purpose computer. FairWarning IP, LLC v. Iatric
Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016).
Second, Appellant argues:
In order to compare the pending claims to the algorithm
being analyzed in Benson, the Final Office Action has
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oversimplified the subject matter of the pending claims.
Specifically, the Final Office Action oversimplifies the pending
claims by first stating that the claimed method “simply
describes the concept of gathering and combining data by
reciting steps of organizing information through mathematical
relationships.”
(App. Br. 7.) Contrary to Appellant’s arguments, the Examiner has
identified the appropriate judicial exceptions as “fundamental economic
practices,” “certain methods of organizing human activity,” or
“mathematical concepts” and the Examiner has compared the claimed
concepts of independent claim 1 to appropriate Supreme Court and Federal
Circuit decisions (i.e., language from Alice, Electric Power Group,
Digitech). Accordingly, the Examiner has met the burden of a general prima
facie notice requirement. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir.
2011) (“[A]ll that is required of the [Patent] [O]ffice to meet its prima facie
burden of production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of [section] 132.” ).
Third, Appellant argues that:
The key focus of the improvements [similar to McRO] recited
in the pending claims relate to the “data stream” and the
corresponding analysis of the “data stream” by the cost-per-
action engine to calculate a specific “confidence score” to grade
a user’s online interactions. The improvements further describe
determining whether the “confidence score” is above or below a
“threshold,” and rewarding the user accordingly.
(App. Br. 10.) However, other than summarizing the claims with a
conclusory statement that the claims recite an “improvement” analogous to
McRO, Appellant does not adequately explain how this case pertains to the
claimed invention.
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Fourth, Appellant argues that “the claimed features of the pending
claims, when considered as a whole, provide a specific improvement to the
existing advertising systems and/or methods that does not preempt all means
of providing similar results.” (App. Br. 10.) However, although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Where claims are deemed to recite only patent ineligible subject matter
under the two-step Alice analysis, as they are here, “preemption concerns are
fully addressed and made moot.” Id.
Last, Appellant argues:
Thus as in BASCOM, an inventive concept can be found
in the non-conventional and non-generic arrangement of
known, conventional pieces. So the features of the pending
claims, when taken as a whole, recite a new, non-obvious
claimed invention directed to receiving the “data stream” to
enable a cost-per-action engine (e.g., a computer) to more
accurately calculate whether a user’s online actions satisfy
terms and conditions of an advertiser’s requested online action,
and rewarding the user accordingly.
(App. Br. 11–12.) Similarly, Appellant argues:
Here, the pending claims similarly [to Amdocs] recite to
the unconventional solution of relying on the “data stream”
received from an available sensor to enable a cost-per-action
engine (e.g., a computer) to more accurately calculate whether a
user’s online actions satisfy terms and conditions of an
advertiser's requested online action, and rewarding the user
accordingly. By focusing on the “data stream” that includes
information relating to whether a specific user satisfies terms
and conditions of an advertiser’s request for users to conduct
certain online actions, the pending claims describe an
unconventional technological solution that enables the cost-per-
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action engine to reward specific users for satisfying specific
online actions with an advertiser’s interactive media content.
(Id. at 12.) However, other than summarizing the claims with conclusory
statements that the claims recite “non-conventional and non-generic”
conventional pieces, analogous to BASCOM, or that the claims recite an
“unconventional technological solution” analogous to Amdocs, Appellant
does not adequately explain how these cases pertain to the claimed
invention.
Thus, we agree with the Examiner that claims 1, 11, and 21 are
directed towards patent-ineligible subject matter. Accordingly, we sustain
the rejection of independent claims 1, 11, and 21 under 35 U.S.C. § 101.
Claims 3, 6, 13, 16, 24, and 28–39 depend from independent claims 1,
11, and 21, and Appellant has not presented any additional substantive
arguments with respect to these claims. We sustain the rejection of claims 3,
6, 13, 16, 24, and 28–39 under 35 U.S.C. § 101 for the same reasons
discussed with respect to independent claims 1, 11, and 21.

§ 103 Rejection—Ramer, Monteforte, Popowich, and Goldhaber
We are persuaded by Appellant’s arguments (App. Br. 14; see also
Reply Br. 4–5) that the combination of Ramer, Monteforte, Popowich, and
Goldhaber would not have rendered obvious independent claim 1, which
includes the limitation “identifying . . . available sensors for verifying
satisfaction of the terms and conditions of the action.”
The Examiner found that the aggregated behavior data of Ramer and
assisted query formation 2400 of Ramer collectively correspond to the
limitation “identifying . . . available sensors for verifying satisfaction of the
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terms and conditions of the action.” (Final Act. 5.) We do not agree with
the Examiner’s findings.
Ramer relates to “aggregating user behavioral data across multiple
wireless operators.” (Abstract.) Ramer explains that “aggregated behavioral
data, including aggregated behavioral data that has been enriched with third
party data, may be associated with an availability condition prior to delivery
of the data to an ad server.” (¶ 7.) Moreover, Ramer explains that assisted
query formation 2400 for a user search includes tools “may include, for
example, the recommendations, predictions, disambiguations, [or]
categorizations.” (¶ 215.)
Although the Examiner cited to the aggregated behavior data of
Ramer and assisted query formation 2400 of Ramer, the Examiner has
provided insufficient evidence to support a finding that Ramer teaches the
limitation “identifying . . . available sensors for verifying satisfaction of the
terms and conditions of the action.” Instead, assisted query formation 2400
of Ramer assists the user in performing searches, whereas aggregated
behavioral data of Ramer is associated with the user profiles. Accordingly,
the Examiner has not sufficiently articulated how the assisted query
formation 2400 of Ramer and the aggregated behavioral data of Ramer
functionally cooperate to teach the limitation “identifying . . . available
sensors for verifying satisfaction of the terms and conditions of the action,”
as recited in claim 1.
Thus, on this record, the Examiner has not demonstrated that Ramer
teaches the limitation “identifying . . . available sensors for verifying
satisfaction of the terms and conditions of the action,” as recited in claim 1.
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Moreover, Monteforte, Popowich, and Goldhaber do not cure the
deficiencies of Ramer.
Accordingly, we are persuaded by Appellant’s argument that:
However, what Ramer actually describes is a monetization
platform that delivers a user’s behavioral profile data to an ad
server and an assisted query formation process that includes
activating various system tools. . . . . It follows that Ramer . . .
fail[s] to disclose ‘identifying . . . available sensors for
verifying satisfaction of the terms and conditions of [an]
action,’ as recited in claim 1.
(App. Br. 14.)
Alternatively, the Examiner found that response analysis
component 230 and incentive component 220 of Monteforte collectively
correspond to the limitation “identifying . . . available sensors for verifying
satisfaction of the terms and conditions of the action.” (Final Act. 5; see
also Ans. 12–13). In particular, the Examiner found that “[t]he user is
encouraged to continue dialog with the marketing system to increase
changes of winning some prize, which examiner takes as allocating
incentives based on satisfaction of terms and conditions.” (Ans. 12.) We do
not agree with the Examiner’s findings.
Monteforte relates to a mobile marketing system in which “[a]ctive
learning and advanced relationship marketing are employed.” (Abstract.)
Monteforte explains that system 100 includes “dialog component 120
engages a user or consumer in a dialog to acquire pertinent information that
can aid a mobile marketing system.” (¶ 41.) Figure 2 of Monteforte
illustrates representative dialog component 120, which includes question
generation component 210, incentive component 220, and response analysis
component 230. (¶ 42.) Monteforte further explains that “response analysis
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component 230 can receive, retrieve or otherwise obtain or acquire a
response to a question as well as analyze that response” and “[i]t is also to be
noted that the response analysis component 230 can be coupled to the
incentive component [220] to ensure that incentives are provided for
responses or particular types of responses.” (¶ 47.) Moreover, Monteforte
explains that “incentive component 220 can provide one or more
mechanisms that encourage a user to participate in a dialog or to converse
with a marketing system.” (¶ 44.)
Although the Examiner cited to incentive component 220 and
response analysis component 230 of Monteforte, the Examiner has provided
insufficient evidence to support a finding that Monteforte teaches the
limitation “identifying . . . available sensors for verifying satisfaction of the
terms and conditions of the action . . . responsive to the confidence score
being above the threshold, confirming the accomplishment of the requested
action and rewarding the user.” Instead, Monteforte explains that incentive
component 220 can provide the consumer with incentives for merely
participating in the mobile marketing system, and is silent with respect to
incentives being awarded based upon the calculation of “confidence scores
being above [a] threshold,” as recited in claim 1.
Thus, on this record, the Examiner has not demonstrated that
Monteforte teaches the limitation “identifying . . . available sensors for
verifying satisfaction of the terms and conditions of the action,” as recited in
claim 1. Moreover, Ramer, Popowich, and Goldhaber do not cure the
deficiencies of Monteforte.
Accordingly, we are persuaded by Appellant’s arguments that:
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However, these portions from Monteforte’s disclosure cited by
the Examiner’s Answer describe a collection of user inputted
information. It remains that the collection of user inputted
information described by Monteforte fails to disclose a
transmission of data in the form of a “data stream” that relates
“to the satisfaction of the terms and conditions of the action by
a user,” as recited in the pending claims.
(Reply Br. 4–5.)
Thus, we do not sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 3, 6, 24, and 30–35 depend from claim 1. We do
not sustain the rejection of claims 3, 6, 24, and 30–35 under 35 U.S.C.
§ 103(a) for the same reasons discussed with respect to claim 1.
Independent claims 11 and 21 recite limitations similar to those
discussed with respect to claim 1. We do not sustain the rejection of claims
11 and 21, as well as dependent claims 13, 16, 28, 29, and 36–39, for the
same reasons discussed with respect to claim 1.

CONCLUSION
The Examiner’s decision rejecting claims 1, 3, 6, 11, 13, 16, 21, 24,
and 28–39 under 35 U.S.C. § 101 is affirmed.
The Examiner’s decision rejecting claims 1, 3, 6, 11, 13, 16, 21, 24,
and 28–39 under 35 U.S.C. § 103(a) is reversed.

DECISION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 3, 6, 11, 13,
16, 21, 24, 28–
39
§ 101 1, 3, 6, 11, 13,
16, 21, 24, 28–
39

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1, 3, 6, 11, 13,
16, 21, 24, 28–
39
§ 103(a) 1, 3, 6, 11, 13,
16, 21, 24, 28–
39
Overall
Outcome
1, 3, 6, 11, 13,
16, 21, 24, 28–
39

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