Corduneanu, Adrian Dumitru. et al.

Patent Trials and Appeals Board

Sep 23, 2020

12507674 - (D) (P.T.A.B. Sep. 23, 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.
12/507,674 07/22/2009 Adrian Dumitru Corduneanu 16113-1793001 6455
26192 7590 09/23/2020
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
CHOI, PETER H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ADRIAN DUMITRU CORDUNEANU,
EYAL MANOR, SCOTT SPENCER, and JOERG HEILIG
________________

Appeal 2019-001651
Application 12/507,674
Technology Center 3600
________________

Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–4, 6, 8, 11–17, and 22–25, which constitute all of the
pending claims.1 Appeal Br. 4. These claims stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception to patent-eligible subject
matter (an abstract idea) without significantly more. Final Action mailed
January 9, 2018 (“Final Act.”), at 2–9. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Google,
LLC. Appeal Brief filed July 5, 2018 (“Appeal Br.”), 1.
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STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
Methods, systems, and apparatuses to match content
providers and interested content users are described. Input
indicating an accessing of a network location by a user is
received along with the user’s identifier. The identifier is
obfuscated and transmitted to a content provider configured to
provide content to the user at the network location. A re-direct
identifier is transmitted to the user instructing the user to directly
contact the content provider. When the user contacts the content
provider, the user transmits a provider-specific identifier by
which the content provider identifies the user and the obfuscated
user identifier. The content provider updates a database of
obfuscated user identifiers and provider-specific user identifiers
based on the received identifiers. Thus, the content provider is
enabled to identify interested users based on obfuscated and
provider-specific user identifiers.
Abstract.
Independent claim 1 illustrates the subject matter of the appealed
claims:
1. A method, performed by one or more computers, the
method comprising:
receiving, by one or more computers, from a content
provider, a network identifier that identifies the content provider;
generating, based on the network identifier received from
the content provider, traffic detecting code;
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providing the traffic detecting code to the content
provider, wherein the content provider includes the traffic
detecting code in a particular web page of a content publisher,
and wherein the traffic detecting code causes a device that
accesses the particular web page to transmit a user identifier of
the user and the network identifier of the content provider to the
one or more computers;
determining, by the one or more computers, that the device
of the user is accessing the particular web page that includes the
traffic detecting code based on the user identifier of the user and
the network identifier of the content provider being generated by
the traffic detecting code;
determining, by the one or more computers, that the
content provider is associated with the traffic detecting code
based on the network identifier of the content provider being
generated by the traffic detecting code,
obfuscating, by the one or more computers, the user
identifier received from the device of the user to generate an
obfuscated user identifier, and
transmitting, by the one or more computers, to the content
provider identified by the network identifier of the content
provider received from the device of the user, the obfuscated user
identifier rather than an identity of the user to request for content
to be provided to the user;
matching, by the one or more computers and in a match
table, the obfuscated user identifier to a provider-specific
identifier different from the obfuscated user identifier;
receiving, from the content provider based on the
obfuscated user identifier, an intent to provide content to the
user; and
generating and transmitting, by the one or more computers
and to the device of the user in response to receiving the intent to
provide the content to the user from the content provider, a re-
direct instruction that causes the device of the user to (i) contact
the content provider for the content and (ii) transmit to the
content provider the provider-specific identifier different from
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the obfuscated user identifier based on the match between the
obfuscated user identifier and the provider-specific identifier in
the match table.

PRINCIPLES OF LAW
A. SECTION 101
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject 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. 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 Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). 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
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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
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
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. at 191 (citing
Benson and Flook); see also, 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 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
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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 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1. The Manual of Patent Examining Procedure
(“MPEP”) now incorporates this revised guidance and subsequent updates at
Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).2
Under MPEP § 2106, we first look to whether the claim recites the
following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing

2 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
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human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application.3
MPEP §§ 2106.04(a), (d).
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 is not
“well-understood, routine, [and] conventional activity” in the field; 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.
MPEP § 2106.05(d).

ANALYSIS
The Examiner determines, “the independent claims . . . are directed, in
part, to matching content providers with interested content users to send
content without knowing the specific identi[t]y of the user.” Final Act. 2.
The Examiner reasons that “[t]hese claim elements are considered to be
abstract ideas because they are similar to ‘tailoring content based on

3 “Examiners evaluate integration into a practical application 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.” MPEP § 2106.04(d)II.
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information about the user.’” Id. (citing Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)).
The Examiner does not explain which groupings of abstract ideas
under the 2019 Guidance the claims purportedly recite.4 But we understand
that the purported abstract idea, as the Examiner characterizes it, would fall
within the 2019 Guidance’s grouping of certain methods of organizing
human activity, and more particularly, the sub-grouping of managing
personal interactions between people. MPEP § 2106.04(a)(2)II.
The also Examiner determines that the additional elements of claim,
including “one or more computers,” a “user’s device,” “the receipt and
transmission of data among computers,” and “traffic detecting code”
constitute mere generic recitations of technical elements—not any specific
improvements of the additional elements. Final Act. 3. The Examiner
further determines that the claims do not recite significantly more than the
abstract idea because the additional elements merely perform well-
understood, routine, and conventional computing functions. Id.
The Examiner additionally determines that while the claims describe
the recited traffic detecting code element as something that is invoked by the
user’s device, the claims do not affirmatively recite this process. Final
Act. 3. According to the Examiner, the claims, instead, are directed to a
procedure that occurs as a consequence of the reading of the source code of
the web page that was provided to the content provider. Id.
Appellant argues, “the computer capabilities are improved by
enhancing user privacy by changing the way information is shared among

4 The Final Rejection and Examiner’s Answer mailed in 2018, prior to the
issuance of the 2019 Guidance.
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the computers to address a problem that arises in the software arts.” Appeal
Br. 6. According to Appellant,
[the claimed invention] specifically enables the computer allow
“only [an] obfuscated user identifier to be transmitted to the
content provider,” such that “the content provider . . . does not
receive private information about the true identity of the user,”
while “the content provider . . . is [still] equipped to identify the
user . . . in a subsequent transaction . . .” This provides the
advantage of protecting user privacy, while still enabling content
providers to recognize the same user over multiple interactions
and/or transactions.
Id. (citing Spec. ¶ 33).
[I]t is the ordered combination of specific operations, and the
non-conventional way in which the various computers
communicate that “improves the existing technological process”
of protecting user privacy in the context of online content
distribution, which is “unlike cases such as Alice where a
computer was merely used as a tool to perform an existing
process.”
Appeal Br. 7.
Appellant’s arguments are persuasive. The present claims go beyond
merely “tailoring content based on information about the user,” as was the
case in Intellectual Properties v. Capital One Bank. As even the Examiner
notes, the claims require “send[ing] content without knowing the specific
identi[t]y of the user.” Final Act. 2.
Our reviewing court has explained that to provide sufficient
articulated reasoning as to why a claim is directed to an abstract idea or
other patent-ineligible concept (e.g., a law of nature), an Examiner must
adequately address both (a) what the character of the claim as a whole is
directed to, and (b) whether that something is an abstract idea or a patent-
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ineligible concept. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016).
To be sure, the Examiner determines that all of the claimed computer
components, individually, constitute additional elements that are merely
recited generically. Final Act. 3–4; Examiner’s Answer mailed Oct. 30,
2018, at 3–6. But this determination does not sufficiently address the claim
limitations as an ordered combination. That is, the Examiner does not
sufficiently explain whether, much less provide sufficient articulated
reasoning for why, the process of obfuscating the user identifier to be
transmitted to the content provider, such that the content provider does not
receive private information about the true identity of the user, while the
content provider is still equipped to identify the user in a subsequent
transaction, as claimed, constitutes an abstract idea.
By oversimplifying the claims, the Examiner fails to provide
sufficient articulated reasoning (i.e., notice) to Appellant of the Examiner’s
determination of what the character of claim 1 as a whole is directed to.
Such an oversimplified claim analysis, at best, may show that the claim
involves an abstract idea, but cannot show the character of the claim as a
whole is directed to an abstract idea. As such, the Examiner has not
established pursuant to step 2A, prong 1, of the 2019 Guidance what abstract
ideas are recited in the claims. Nor has the Examiner established pursuant to
step 2A, prong 2, of the 2019 Guidance why the claims fail to integrate the
abstract ideas into a practical application. Because the Patent Trial and
Appeals Board is a body of appellate review, we decline to perform such an
analysis de novo.
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We, therefore, reverse the Examiner’s rejection of claims 1–4, 6, 8,
11–17, and 22–25 under 35 U.S.C. § 101 as being directed to a judicial
exception to patent-eligible subject matter.

DECISION SUMMARY
In summary:

REVERSED

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–4, 6, 8, 11–17,
22–25
101 Eligibility 1–4, 6, 8, 11–17,
22–25