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Patent Trials and Appeals Board

Jul 14, 2020

13944558 - (D) (P.T.A.B. Jul. 14, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/944,558 07/17/2013 Steven R. Boal 60202-0248 8842
124871 7590 07/14/2020
Hickman Palermo Becker Bingham / Quotient
1 Almaden Boulevard, Floor 12
San Jose, CA 95113
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/14/2020 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN R. BOAL
____________

Appeal 2019-001394
Application 13/944,558
Technology Center 3600
____________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Steven R. Boal (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 1, 5–11, 13–22, and 25–30, the only claims pending

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed June 29, 2018) and Reply Brief (“Reply Br.,” filed November 30,
2018), and the Examiner’s Answer (“Ans.,” mailed October 3, 2018) and
Final Action (“Final Act.,” mailed May 3, 2018).
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in the application on appeal.2 We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellant invented a way of generation, processing, storage,
management, usage, distribution and/or delivery of digital offers, including
digital coupons and other digital promotional vehicles. Specification para. 3.
An understanding of the invention can be derived from a reading of
exemplary claim 22, which is reproduced below (bracketed matter and some
paragraphing added).
22. A method for facilitating consumer identity resolution,
the method comprising:
[1] receiving at least two collections of consumer records from
at least two different sources,
the first collection including a set of first data fields and
the second collection including a set of second data
fields;
[2] computing a set of first trust scores for the first data fields
and a set of second trust scores for the second data fields,
the set of first trust scores quantifying how accurate the
fields in the set of first data fields of the first collection
are and the set of second trust scores quantifying how
accurate the fields in the set of second data fields of the
second collection are;
[3] generating correlations between a record from the first
collection and a record from the second collection,
the correlations being based on identifying one or more
data fields in the set of first data fields of the first
collection that are similar to and have similar values to

2 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 Quotient
Technology Inc. (Appeal Br. 1).

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one or more data fields in the set of second data fields of
the second collection, the set of first trust scores for the
first data fields, and the set of second trust scores for the
second data fields;
[4] generating a master collection of consumer records
comprising at least one master consumer record, the at least one
master consumer record being based on the correlations,
each master consumer record describing a different
consumer entity;
[5] receiving a set of contextual transaction data, the contextual
transaction data including information regarding at least one of:
a universal product code,
a quantity of product purchased,
a number of items purchased,
a transaction amount,
at least a portion of a credit card number used, a payment
identifier used,
a secure payment hash key,
a data processing system or facility,
time,
date,
one or more offers activated or redeemed,
customer name,
phone number,
pin number,
password, code,
loyalty card number,
RFID data,
a device identifier,
one or more items that were purchased in a previous or
concurrent transaction,
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or
a transaction number;
[6] identifying a consumer based on
the contextual transaction data
and
the master collection of consumer records;
[7] selecting at least one offer based on the identification of the
consumer;
[8] transmitting, to a retailer point of sale terminal, instructions
for causing printing a paper receipt that includes the offer
in response to a request for a paper receipt made by the
consumer;
[9] printing, at a retailer point of sale terminal, a paper receipt
that includes the offer.
Claims 1, 5–11, 13–22, and 25–30 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
ANALYSIS
STEP 13
Claim 22, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First,[]
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question,
[]consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine
what the claims are directed to. This begins by determining whether the
claims recite one of the judicial exceptions (a law of nature, a natural
phenomenon, or an abstract idea). Then, if the claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims “apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Revised Guidance, 84 Fed.
Reg. 54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
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additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 22 recites receiving consumer data, computing trust scores, generating
correlations data, generating consumer records, receiving transaction data,
identifying consumer data, and selecting, transmitting, and printing offer
data. Computing scores and generating correlations data are mathematical
algorithms used in data analysis. Identifying and selecting data are
rudimentary data analysis. Thus, claim 22 recites receiving, analyzing,
generating, transmitting, and printing data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 22 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include: (1) mathematical concepts;4 (2) certain methods of organizing
human activity;5 and (3) mental processes.6 Among those certain methods

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
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of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 22 recites the concept of
managing advertising. Specifically, claim 22 recites operations that would
ordinarily take place in advising one to select and print an ad for an
identified consumer based on transaction data and scored and correlated
consumer master data. The advice to select and print an ad for an identified
consumer based on transaction data and scored and correlated consumer
master data involves transmitting, to a retailer point of sale terminal,
instructions for causing printing a paper receipt that includes an offer, which
is an economic act, and printing, at a retailer point of sale terminal, a paper
receipt that includes the offer, which is an act ordinarily performed in the
stream of commerce. For example, claim 22 recites “transmitting, to a
retailer point of sale terminal, instructions for causing printing a paper
receipt that includes the offer,” which is an activity that would take place
when one is providing a commercial offer. Similarly, claim 1 recites
“printing, at a retailer point of sale terminal, a paper receipt that includes the
offer,” which is also characteristic of managing commercial advertising.
The Examiner determines the claims to be directed to sending and
receiving data to select and send targeted advertising. Final Act. 3. The
preamble to claim 22 recites that it is a method for facilitating consumer
identity resolution. The steps in claim 22 result in managing advertising by
selecting and printing an ad for an identified consumer based on transaction

2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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data and scored and correlated consumer master data absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1 and 5 recite receiving data.
Limitations 2–4 and 6–9 recite generic and conventional analyzing,
generating, transmitting, and printing of consumer, transaction, and ad data,
which advise one to apply generic functions to get to these results. The
limitations thus recite advice for selecting and printing an ad for an
identified consumer based on transaction data and scored and correlated
consumer master data. To advocate selecting and printing an ad for an
identified consumer based on transaction data and scored and correlated
consumer master data is conceptual advice for results desired and not
technological operations.
The Specification at paragraph 3 describes the invention as relating to
“generation, processing, storage, management, usage, distribution and/or
delivery of digital offers, including digital coupons and other digital
promotional vehicles.” Thus, all this intrinsic evidence shows that claim 22
recites managing advertising. This is consistent with the Examiner’s
determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because advertising is a way of
eliciting commerce. The concept of managing advertising by selecting and
printing an ad for an identified consumer based on transaction data and
scored and correlated consumer master data is one idea for managing how
ads are selected. The steps recited in claim 22 are part of how this might
conceptually be premised.
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Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014) (advertising).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
generating, transmitting, and printing data mimic human thought processes
of observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016). Claim 22, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data reception, analysis,
generation, transmission, and printing and does not recite an improvement to
a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (Finding claims
not abstract because they “focused on a specific asserted improvement in
computer animation.”). As such, claim 22 recites receiving, analyzing,
generating, transmitting, and printing data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 22 recites
managing advertising by selecting and printing an ad for an identified
consumer based on transaction data and scored and correlated consumer
master data, which is a commercial and legal interaction, one of certain
methods of organizing human activity identified in the Revised Guidance,
and, thus, an abstract idea.
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STEP 2A Prong 2
The next issue is whether claim 22 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts [“]to a new and useful end[”], we have said,
remain eligible for patent protection.
Accordingly, in applying the [section] 101 exception, we
must distinguish between patents that claim the [‘]buildin[g]
block[s’] of human ingenuity and those that integrate the
building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 5 are pure data gathering
steps. Limitations describing the nature of the data do not alter this.
Steps 7–9 are insignificant post solution activity, such as storing,
transmitting, or displaying the results. Steps 2–4 and 6 recite generic
computer processing expressed in terms of results desired by any and all
possible means and so present no more than conceptual advice. All
purported inventive aspects reside in how the data is interpreted and the

7 See, e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S.
175 (1981)).
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results desired, and not in how the process physically enforces such a data
interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellant’s claim 22 simply recites the concept of
managing advertising by selecting and printing an ad for an identified
consumer based on transaction data and scored and correlated consumer
master data as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and does not
recite any particular implementation.
Claim 22 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification only spells out different
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of managing advertising by selecting and printing an ad for an
identified consumer based on transaction data and scored and correlated
consumer master data under different scenarios.8 It does not describe any
particular improvement in the manner a computer functions. Instead,
claim 22 at issue amounts to nothing significantly more than an instruction
to apply managing advertising by selecting and printing an ad for an

8 The Specification describes a desktop computer, laptop computer,
netbook, electronic notebook, ultra mobile personal computer (UMPC),
electronic tablet, client computing device, client terminal, client console,
mobile telephone, smartphone, wearable computer, head-mounted computer,
or personal digital assistant. Spec. para. 56. The Specification also
describes using smartphones, personal computers. Spec. para. 170.
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identified consumer based on transaction data and scored and correlated
consumer master data using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 22 is directed to achieving the result of
managing advertising by advising one to select and print an ad for an
identified consumer based on transaction data and scored and correlated
consumer master data, as distinguished from a technological improvement
for achieving or applying that result. This amounts to commercial or legal
interactions, which fall within certain methods of organizing human activity
that constitute abstract ideas. The claim does not integrate the judicial
exception into a practical application.
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STEP 2B
The next issue is whether claim 22 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea[] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, generating, transmitting, and printing
data amounts to electronic data query and retrieval—some of the most basic
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functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016); see also In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible
narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’
. . . those functions can be achieved by any general purpose computer
without special programming”). None of these activities is used in some
unconventional manner nor does any produce some unexpected result.
Appellant does not contend it invented any of these activities. In short, each
step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 22 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
generation-transmission-print is equally generic and conventional. See
Ultramercial, 772 F.3d at 715 (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
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2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
We conclude that claim 22 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.

REMAINING CLAIMS
Claim 22 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.

LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
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methods of organizing human activity as exemplified by the commercial and
legal interaction of managing advertising by advising one to select and print
an ad for an identified consumer based on transaction data and scored and
correlated consumer master data, without significantly more.

APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 3–9 and Answer 3–9 and
reach similar legal conclusions. We now turn to the Reply Brief.
Appellant argues that the asserted claims are akin to the claims
found patent-eligible in Data Engine Techs. LLC v. Google LLC, 906 F.3d
999 (Fed. Cir. 2018). Reply Br. 1–2. But some of the claims in Data
Engine were ineligible. In contrast to Data Engine’s representative claim 12,
the Data Engine court found claim 1 of another of the patents before it to be
directed to patent-ineligible subject matter. The court explained that, unlike
representative claim 12, claim 1 was “directed at something a bit more
general.” It found that claim 1’s more general recitation was “not limited to
the specific technical solution and improvement in electronic spreadsheet
functionality,” but instead was directed to “any means for identifying
electronic spreadsheet pages.” Data Engine, 906 F.3d at 1012. The instant
claims are analogously not limited to a specific technical solution and
improvement in user identification and ad selection functionality, but instead
are directed to any means for selecting and printing an ad for an identified
consumer based on transaction data and scored and correlated consumer
master data.
We are not persuaded by Appellant's argument that
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the focus of the claims on computing trust scores for data fields
in transaction records, indicating how accurate the data in these
fields are, correlating collections based on trust scores, then
generating or selecting offers based on both correlated records
with trusted fields and context data for a current transaction,
culminating in transmitting the offer and printing a receipt, are
unusual and different in the art as well as specifically tied to
particular machine operations. The claims cannot be abstract
because of the particular operations that they require a
computer to perform and because the result is a specific kind of
data transmission and printing of a receipt. In other words, the
means used to determine and transmit a digital offer is so
specifically claimed and unusual compared to past practice that
it cannot be considered to cover all ways, abstractly, of
generating and sending digital offers at a point of sale.
Reply Br. 3. The first sentence contends novelty, not eligibility. “A claim
for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
The operations only require a computer because they are recited as
being in a computer context. Data reception, analysis, generation,
transmission, and printing can be done with paper and pencil in a manual
context. “The Supreme Court and this court have repeatedly made clear that
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”
Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016). The result is a specific kind of data transmission and printing of
a receipt only in the sense it is specified using words and described as
including offer data. There is nothing technologically specific about the
result or how it is obtained.
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To say that “it cannot be considered to cover all ways, abstractly, of
generating and sending digital offers at a point of sale” (argument supra) is
to say so only in the sense the claims more precisely recite any means for
selecting and printing an ad for an identified consumer based on transaction
data and scored and correlated consumer master data. As the added details
are conceptual ideas for data sources, this is still no more than a conceptual
idea devoid of implementation details.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs., 838 F.3d at 1269.
Appellant also attempts to analogize the claims to those involved in
McRO, supra. Reply Br. 4. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, “it was the incorporation
of the claimed rules not the use of the computer, that improved the
existing technology process,” because the prior process performed by
humans “was driven by subjective determinations rather than specific,
limited mathematical rules.” McRO, 837 F.3d at 1314 (citation and
alterations omitted). In contrast, the claims of the instant application
merely implement an old practice of using decision criteria in making ad
decisions in a new environment. Appellant has not argued that the claimed
processes of selecting ads apply rules of selection in a manner technologically
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different from those which humans used, albeit with less efficiency, before the
invention was claimed. Merely pigeon holing the objects of decision making
in tiers to aid decision making is both old and itself abstract.
The claims in McRO were not directed to an abstract
idea, but instead were directed to “a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type.” We explained that “the claimed
improvement [was] allowing computers to produce ‘accurate
and realistic lip synchronization and facial expressions in
animated characters’ that previously could only be produced by
human animators.” The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094.
We are not persuaded by Appellant’s argument that the claims have
the benefit of “identifying an ambiguous consumer based on computed trust
scores and transactional data and delivering a targeted electronic offer to the
identified consumer, has the benefit of reducing the use of computer
resources such as CPU cycles that would be used for delivering less than
optimal offers to unidentified consumers.” Reply Br. 5. This only contends
that the information, not the underlying technology, is improved. “The
claims are focused on providing information to traders in a way that helps
them process information more quickly, not on improving computers or
technology. . . . The ‘tool for presentation’ here . . . is simply a generic
computer.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384–85
(Fed. Cir. 2019) (citations omitted). The asserted reduction in computer
resources is only that resulting from any improvement in reducing data
input, negating need for more information retrieval. This is not a
technological improvement.
Appeal 2019-001394
Application 13/944,558

20

We are not persuaded by Appellant’s argument that “claim 1 recites
not only the transmission of instructions for printing, but also transforming
the offer data to a different state by printing a paper receipt.” Reply Br. 6.
The Specification describes using conventional rather than special purpose
computers. Printing a paper receipt is a conventional retail operation by
conventional equipment used for their conventional purpose.
We are not persuaded by Appellant’s argument that “[c]laim 1 recites
unconventional steps of an unconventional solution that achieves an
improved technological result, so it does not matter that [c]laim 1 recites
standard computing elements included in a data processing system. What
matters is the process innovation as evidenced by the recited and
unconventional steps.” Reply Br. 7. We determine supra that all steps are
conventional receiving, analyzing, generating, transmitting, and printing
operations.
We are not persuaded by Appellant’s argument that “pages . . . of the
Examiner’s Answer fail to provide a showing of fact that the additional
elements in the independent and dependent claims are not sufficient to
amount to significantly more than the judicial exception.” Reply Br. 7.
Appellants cite Berkheimer for the proposition that evidence of something
being conventional is necessary. Berkheimer v. HP Inc., 881F.3d1360 (Fed.
Cir. 2018). Support for this finding is provided under Step 2B supra.
CONCLUSIONS OF LAW
The rejection of claims 1, 5–11, 13–22, and 25–30 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.

Appeal 2019-001394
Application 13/944,558

21

CONCLUSION
The rejection of claims 1, 5–11, 13–22, and 25–30 is affirmed.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5–11, 13–22,
25–30
101 Eligibility 1, 5–11, 13–22,
25–30

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) (2011).

AFFIRMED